To: | Founderize LLC (dg@griffithip.com) |
Subject: | U.S. Trademark Application Serial No. 88491596 - STARFISH - N/A |
Sent: | September 25, 2019 09:50:17 AM |
Sent As: | ecom110@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. 88491596
Mark: STARFISH
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Correspondence Address: 400 WEST PEACHTREE ST NW 4-2002
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Applicant: Founderize LLC
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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: September 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Comparison of Marks
Applicant seeks to register STARFISH (standard characters), while the registrants own and use the marks STARFISH INTEGRATED BRAND EXPERIENCES (standard characters and stylized format)(Regs. 4602298, 4602299) and STARFISH IMPACT (standard characters)(Reg, 5213236).
In a likelihood of confusion determination, 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
Finally, 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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
With respect to Registration Nos. 4602298 and 4602299, the wording “INTEGRATED BRAND EXPERIENCES” in the registered mark is merely descriptive of or generic for the registrant’s services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording STARFISH the more dominant element of the mark.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Comparison of Services
Generally, the greater degree of similarity between the applied-for mark and the registered mark(s), the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
In addition, where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Here, applicant seeks to register its mark for, inter alia, “marketing services in the fields of emerging technology companies, startups, investors, accelerator groups.”
The registrants use their marks on “Advertising services, namely, creating corporate and brand identity for others; advertising, promotion and marketing services in the nature of drafting marketing plans, brand positioning, brand identity and strategy consultation; providing marketing consulting in the field of social media; business project management services for others in the field of marketing” and “Business consultation services to assist non-profit organizations in planning, managing, and conducting fundraising activities via a global computer network; Business management consulting, strategic planning and business advisory services provided to nonprofit organizations; Business support services, namely, business consulting to freelancers, start-ups, existing businesses and non-profit organizations; Marketing consulting services relating to long-term business strategy development for non-profit organizations,” respectively.
Both applicant and the registrants use the marks on marketing/marketing consultation services in Class 035 and are identical and highly complementary in nature.
In sum, given the identical, complementary and highly related nature of the marketing services and the similar commercial impression of the marks themselves, there is a substantial likelihood that purchasers would be confused as to the source of the services. As such, the mark is refused under Section 2(d) of the Trademark Act.
Note the additional basis for refusal.
SPECIMEN(S) REFUSED FOR CLASS 035 – DOES NOT SHOW MARK FOR ANY SPECIFIED SERVICES – USE
Registration is refused because the specimens do not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 035 in the application. 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 Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, the specimens show use of the mark for dedicated offices, co-working, events and education. Hosting business conferences and providing marketing services are not mentioned.
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 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.
OPPORTUNITY TO RESPOND
Applicant may respond to the stated Section 2(d) & specimen refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the Class 035 services to which the Section 2(d) refusal pertains;
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for Class 035 services identified in the specimen refusal, i.e., the entire class, if appropriate. TMEP §806.03(h).
If applicant chooses to respond to the refusal to register, applicant must also respond to the following requirement(s).
REQUIREMENT(S)
IDENTIFICATION OF SERVICES UNACCEPTABLE – CLASSES 035 & 041
Applicant must specify the common commercial or generic name for the goods and/or services. See TMEP §1402.01. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses and/or describe the nature of the services as well as their main purpose, channels or trade, and the intended consumer(s). See id.
Applicant may adopt the following wording, if accurate:
Class 035:
Hosting business conferences in the fields of business and technology; marketing services in the fields of emerging technology companies, startups, investors, accelerator groups.
Class 036: (acceptable as applied for)
Rental of office space; Rental of offices for co-working; Incubation services, namely, rental of office space to freelancers, start-ups, existing businesses and non-profits; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space.
Class 041:
Entertainment services in the nature of hosting social entertainment events;
The wording “production, sponsorship, and management services in the technology fields of technology and entrepreneurship” is vague and indefinite and must be further clarified in order to be properly classified and found acceptable. For example, what is applicant producing? Sponsorship search services are in Class 035. Management are also usually Class 035 business services. More information is required.
Educational programs and events, namely, the presentation of _____ (specify, e.g., seminars, lectures, workshops, panel discussions)) all in the field of emerging technology and entrepreneurship.
Again, 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
/Tricia Sonneborn/
Trademark Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
tricia.sonneborn@uspto.gov
RESPONSE GUIDANCE