To: | TS Safety Inc. (tssafety@tssafetyinc.com) |
Subject: | U.S. Trademark Application Serial No. 88426322 - REACT - N/A |
Sent: | July 27, 2019 12:14:32 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88426322
Mark: REACT
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Correspondence Address:
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Applicant: TS Safety Inc.
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Reference/Docket No. N/A
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 27, 2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3724504, 4967466, 4318527, and 5425106. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied to register the mark REACT in standard characters for use in connection with “Printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprised solely of one or more of the foregoing materials in the field of all associated work including, workplace violence prevention plan, safety and security plan, emergency action plan, violent event recovery plan, and safety and security committee plan” in International Class 016, “Consulting services in the field of workplace safety, security and all associated work including, inspections and audits of property and facilities, crime prevention, work place violence prevention, violent event response, threat assessment and identification, and OSHA 29 CFR compliance training; Educational services, namely, conducting classes, seminars, conferences, workshops, practice drills, evaluations in the fields of all associated work including, crime prevention, work place violence prevention, violent event response, threat assessment and identification, and OSHA 29 CFR compliance and distribution of training materials in connection therewith” in International Class 041, and “Consulting in the field of workplace safety” in International Class 045.
The registered marks are following:
1. Reg. No. 3724504 REACT in standard characters for use in connection with “Loss control training services in the field of accident prevention” in International Class 041
2. Reg. No. 4967466 REACT ESCAPE SURVIVE in standard characters for use in connection with “Providing educational courses in the field of active shooter training offered through online nondownloadable videos which include testing segments” in International Class 041
3. Reg. No. 4318527 REACT RIGHT in standard characters for use in connection with “manuals and series of field reference guide books pertaining to CPR and first aid” in International Class 016 and “educational services, namely, conducting seminars, courses and workshops pertaining to CPR and first aid and distributing course materials in connection therewith” in International Class 041
4. Reg. No. 5425106 REDUCE.REACT.RECOVER in standard characters for use in connection with “Training services in the field of security” in International Class 041.
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.
a. Similarity of the Marks
Reg. No. 3724504
In the present case, applicant’s mark is REACT and registrant’s mark is REACT. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Reg. Nos. 4967466, 4318527, and 5425106
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).
Therefore, the marks are confusingly similar.
b. Relatedness of the Goods and/or Services
In addition, where the marks of the respective parties are identical or virtually identical, as in this case for Reg. No. 3724504, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Here, applicant’s goods and/or services are “Printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters, adhesive backed stickers, and kits comprised solely of one or more of the foregoing materials in the field of all associated work including, workplace violence prevention plan, safety and security plan, emergency action plan, violent event recovery plan, and safety and security committee plan” in International Class 016, “Consulting services in the field of workplace safety, security and all associated work including, inspections and audits of property and facilities, crime prevention, work place violence prevention, violent event response, threat assessment and identification, and OSHA 29 CFR compliance training; Educational services, namely, conducting classes, seminars, conferences, workshops, practice drills, evaluations in the fields of all associated work including, crime prevention, work place violence prevention, violent event response, threat assessment and identification, and OSHA 29 CFR compliance and distribution of training materials in connection therewith” in International Class 041, and “Consulting in the field of workplace safety” in International Class 045 and registrants’ goods and/or services are:
1. Reg. No. 3724504 REACT for use in connection with “Loss control training services in the field of accident prevention” in International Class 041
2. Reg. No. 4967466 REACT ESCAPE SURVIVE for use in connection with “Providing educational courses in the field of active shooter training offered through online nondownloadable videos which include testing segments” in International Class 041
3. Reg. No. 4318527 REACT RIGHT for use in connection with “manuals and series of field reference guide books pertaining to CPR and first aid” in International Class 016 and “educational services, namely, conducting seminars, courses and workshops pertaining to CPR and first aid and distributing course materials in connection therewith” in International Class 041
4. Reg. No. 5425106 REDUCE.REACT.RECOVER for use in connection with “Training services in the field of security” in International Class 041.
In this case, the application uses broad wording to describe “Consulting services in the field of workplace safety, security and all associated work including, inspections and audits of property and facilities, crime prevention, work place violence prevention, violent event response, threat assessment and identification, and OSHA 29 CFR compliance training; Educational services, namely, conducting classes, seminars, conferences, workshops, practice drills, evaluations in the fields of all associated work including, crime prevention, work place violence prevention, violent event response, threat assessment and identification, and OSHA 29 CFR compliance and distribution of training materials in connection therewith” and “Consulting in the field of workplace safety”, which presumably encompasses all goods and/or services of the type described, including registrants’ more narrow “Loss control training services in the field of accident prevention” (Reg. No. 3724504), “Providing educational courses in the field of active shooter training offered through online nondownloadable videos which include testing segments” (Reg. No. 4967466), “manuals and series of field reference guide books pertaining to CPR and first aid” and “educational services, namely, conducting seminars, courses and workshops pertaining to CPR and first aid and distributing course materials in connection therewith” (Reg. No. 4318527), and “Training services in the field of security” (Reg. No. 5425106). 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 goods and/or 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 goods and/or 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 goods and/or services are related.
For the above reasons, the applied-for mark is refused registration under Section 2(d) of the Trademark Act for likelihood of confusion with the cited registered marks.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if applicant responds to the refusals, applicant must also respond to the requirement set forth below.
SPECIMEN DOES NOT SHOW MARK IN USE IN COMMERCE
Registration is refused because the specimen in International Classes 016, 041, and 045 is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Arriola, Kimberly/
Attorney Advisor
Law Office 128
(571)270-7984
kimberly.arriola@uspto.gov
RESPONSE GUIDANCE