To: | Witful, LLC (Troy.Leonard@woodsfuller.com) |
Subject: | U.S. Trademark Application Serial No. 88412829 - KW - 19323-50878 |
Sent: | July 17, 2019 07:12:36 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88412829
Mark: KW
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Correspondence Address: |
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Applicant: Witful, LLC
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Reference/Docket No. 19323-50878
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 17, 2019
REFUSAL - SECTION 2(d) – LIKELIHOOD OF CONFUSION
Applicant’s mark is KW in stylized form and design, for “advertising and promotion services and related consulting; advertising and marketing consultancy; advertising services; brand concept and brand development services for corporate and individual clients; digital advertising services; marketing consulting; marketing research; promoting the goods and services of others by means of distributing advertising on the internet; advertising and marketing services, namely, promoting the goods and services of others; advertising services, namely, creating corporate and brand identity for others; marketing services, namely, promoting or advertising the goods and services of others; online advertising services for others, namely, internet and digital media consultation in the nature of planning, buying, and analysis of online media strategy for the purpose of internet ad buying; online advertising services for others, namely, internet and digital media consultation in the nature of search engine marketing, online display advertising, social media strategy in the nature of helping clients create and extend their product and brand strategies by building virally engaging marketing solutions, mobile search engine marketing, mobile display advertising, and real time advertising buying for businesses and organizations” and “designing websites for advertising purposes; designing websites for others; website design and development for others; website design consultancy; computer services, namely, creating, designing and maintaining web sites for others; graphic art design; design of marketing communications for others; design of logos, marks and business identity materials; design of signage; design of event promotional materials; design of print, electronic media and direct mail advertising; design of multimedia marketing communications for dissemination by video, digital video disc, and on computers via global communication networks; consulting, development and design for others of interactive digital media software; graphic design and graphic design consulting services.”
Registrant’s mark is KW & ASSOCIATES HELPS YOU TO REACH YOUR GOALS in stylized form and design, for “advertising agencies; Employment hiring, recruiting, placement, staffing and career networking services; public relations; advertising and promotion services and related consulting; Business marketing services.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Applicant’s mark is KW in stylized form and design.
Registrant’s mark is KW & ASSOCIATES HELPS YOU TO REACH YOUR GOALS in stylized form and design.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In the present case, the entirety of the KW element of registrant’s mark is incorporated into the KW element of the applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Further, the KW term in the registered mark is set apart from the other wording in the mark in much larger type. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In this case, the applied-for mark incorporates the dominant KW part of the register mark and deletes the rest of the wording. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Although the registered mark and the applied-for mark contain stylization and a design, this does not change the similarities between their commercial impression. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Additionally, the registered mark has disclaimed the wording ASSOCIATES from the mark, creating more emphasis on the KW part of the registration. Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
As such, viewed as a whole, applicant’s mark is substantially similar in sound, appearance, connotation and commercial impression to the registered marks.
Relatedness of the Services
Applicant’s mark is for “advertising and promotion services and related consulting; advertising and marketing consultancy; advertising services; brand concept and brand development services for corporate and individual clients; digital advertising services; marketing consulting; marketing research; promoting the goods and services of others by means of distributing advertising on the internet; advertising and marketing services, namely, promoting the goods and services of others; advertising services, namely, creating corporate and brand identity for others; marketing services, namely, promoting or advertising the goods and services of others; online advertising services for others, namely, internet and digital media consultation in the nature of planning, buying, and analysis of online media strategy for the purpose of internet ad buying; online advertising services for others, namely, internet and digital media consultation in the nature of search engine marketing, online display advertising, social media strategy in the nature of helping clients create and extend their product and brand strategies by building virally engaging marketing solutions, mobile search engine marketing, mobile display advertising, and real time advertising buying for businesses and organizations” and “designing websites for advertising purposes; designing websites for others; website design and development for others; website design consultancy; computer services, namely, creating, designing and maintaining web sites for others; graphic art design; design of marketing communications for others; design of logos, marks and business identity materials; design of signage; design of event promotional materials; design of print, electronic media and direct mail advertising; design of multimedia marketing communications for dissemination by video, digital video disc, and on computers via global communication networks; consulting, development and design for others of interactive digital media software; graphic design and graphic design consulting services.”
Registrant’s mark is for “advertising agencies; employment hiring, recruiting, placement, staffing and career networking services; public relations; advertising and promotion services and related consulting; Business marketing services.”
In this case, the registration uses broad wording to describe “advertising agencies,” “public relations; advertising and promotion services and related consulting; business marketing services,” which presumably encompasses all the services of the type described, including applicant’s more narrow “advertising and promotion services and related consulting; advertising and marketing consultancy; advertising services; brand concept and brand development services for corporate and individual clients; digital advertising services; marketing consulting; marketing research; promoting the goods and services of others by means of distributing advertising on the internet; advertising and marketing services, namely, promoting the goods and services of others; advertising services, namely, creating corporate and brand identity for others; marketing services, namely, promoting or advertising the goods and services of others; online advertising services for others, namely, internet and digital media consultation in the nature of planning, buying, and analysis of online media strategy for the purpose of internet ad buying; online advertising services for others, namely, internet and digital media consultation in the nature of search engine marketing, online display advertising, social media strategy in the nature of helping clients create and extend their product and brand strategies by building virally engaging marketing solutions, mobile search engine marketing, mobile display advertising, and real time advertising buying for businesses and organizations” and “designing websites for advertising purposes; designing websites for others; website design and development for others; website design consultancy; computer services, namely, creating, designing and maintaining web sites for others; graphic art design; design of marketing communications for others; design of logos, marks and business identity materials; design of signage; design of event promotional materials; design of print, electronic media and direct mail advertising; design of multimedia marketing communications for dissemination by video, digital video disc, and on computers via global communication networks; consulting, development and design for others of interactive digital media software; graphic design and graphic design consulting services.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Conclusion
In summary, applicant’s and registrant’s marks are confusingly similar in appearance and create a similar overall commercial impression, and their respective services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that the services originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
REQUIREMENT – AMEND THE DESCRIPTION OF THE MARK
The following description is suggested, if accurate: The mark consists of a circle with the stylized letters “KW” inside, where the “W” and the right side of the “K” mix together.
Applicant should note the following additional requirement.
REQUIREMENT – AMEND THE IDENTIFICATION OF SERVICES
Applicant has classified “design of marketing communications for others; design of logos, marks and business identity materials; design of signage; design of event promotional materials; design of print, electronic media and direct mail advertising; design of multimedia marketing communications for dissemination by video, digital video disc, and on computers via global communication networks” in International Class 42. Applicant must amend the application to classify the services in International Class 35. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Applicant may adopt the following identification, if accurate:
Class 35: Advertising and promotion services and related consulting; advertising and marketing consultancy; advertising services; brand concept and brand development services for corporate and individual clients; digital advertising services; marketing consulting; marketing research; promoting the goods and services of others by means of distributing advertising on the internet; advertising and marketing services, namely, promoting the goods and services of others; advertising services, namely, creating corporate and brand identity for others; marketing services, namely, promoting or advertising the goods and services of others; online advertising services for others, namely, internet and digital media consultation in the nature of planning, buying, and analysis of online media strategy for the purpose of internet ad buying; online advertising services for others, namely, internet and digital media consultation in the nature of search engine marketing, online display advertising, social media strategy in the nature of helping clients create and extend their product and brand strategies by building virally engaging marketing solutions, mobile search engine marketing, mobile display advertising, and real time advertising buying for businesses and organizations; design of marketing communications for others; design of logos, marks and business identity materials for others; design of signage for others; design of event promotional materials; design of print, electronic media and direct mail advertising; design of multimedia marketing communications for dissemination by video, digital video disc, and on computers via global communication networks
Class 42: Designing websites for advertising purposes; designing websites for others; website design and development for others; website design consultancy; computer services, namely, creating, designing and maintaining web sites for others; graphic art design; consulting, development and design for others of interactive digital media software; graphic design and graphic design consulting services
ADVISORY
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
Solano, Carlita
/Carlita Jaye Solano/
Examining Attorney
Law Office 128
(571)270-0348
carlita.solano@uspto.gov
RESPONSE GUIDANCE