United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88441840
Mark: SUPERNOVA
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Correspondence Address:
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Applicant: RagingBull.com, LLC
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Reference/Docket No. Raging 19.03
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: August 09, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Registration is refused under Section 2(d) of the Trademark Act. The refusal and any other issues raised in this Office action must be addressed within the specified time period indicated above. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4716732 and 3622831. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Similarity of Marks
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).
Applicant’s proposed mark is SUPERNOVA. The cited marks are SUPERNOVA and MOTLEY FOOL SUPERNOVA. Applicant’s mark is identical to the mark SUPERNOVA in Registration No. 3622831.
Applicant incorporates the SUPERNOVA element of the registered mark MOTLEY FOOL SUPERNOVA as its mark. Likelihood of confusion has frequently been found where one mark is incorporated in another mark. 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); 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.
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 examining attorney also notes that the marks would appear on essentially legally identical services in part, as to Registration No. 4716732, and therefore, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013).
For the reasons set forth above, the examining attorney finds that individuals utilizing the services associated with each mark may believe that the marks are somehow connected or affiliated with each other leading to confusion as to the source of the services.
Similarity of Services
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Applicant’s proposed mark is associated with providing financial information via a web site; providing information in the field of financial stock and equity markets. The marks in the cited registrations are used in connection with financial and insurance services, namely, underwriting and administration of universal life insurance policies; and providing an online subscription-based website featuring information, advice, and commentary all in the field of personal financial investments and financial planning, excluding information pertaining to universal life insurance; providing financial information affecting personal stock portfolios via e-mail notification alerts, excluding information pertaining to universal life insurance.
It is clear from the third-party registrations that singular entities apply the same mark to financial information and insurance underwriting services. Even if the services are not exactly the same, it must be presumed that they move in all appropriate channels of trade and to all appropriate customers for those services as identified, and hence could be offered through the same channels of trade, and would be purchased by the same classes of consumers, i.e., relatively well-heeled consumers faced with an array of financial needs. If these purchasers were to encounter the services under the same or similar marks, it would not be unreasonable for them to assume, mistakenly, that they originate from the same source. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
Based on the legally identical and highly related nature of the services set forth in the application and cited registrations, and the similar trade channels and customers, the du Pont factors of the similarity of the marks and services clearly favor a finding of likelihood of confusion. Accordingly, the proposed mark is refused under Section 2(d) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the following potential refusal.
One Pending Application with Earlier Effective Filing Date
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
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
/Christopher Buongiorno/
Attorney
Law Office 102
(571) 272-9251
christopher.buongiorno@uspto.gov
RESPONSE GUIDANCE
