To: | Fadner Media Enterprises, LLC (roger@thompson-ip.com) |
Subject: | U.S. Trademark Application Serial No. 88495080 - INSIDER - 5175-018 |
Sent: | March 14, 2020 11:10:18 AM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88495080
Mark: INSIDER
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Correspondence Address: |
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Applicant: Fadner Media Enterprises, LLC
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Reference/Docket No. 5175-018
Correspondence Email Address: |
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FINAL OFFICE ACTION
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 14, 2020
INTRODUCTION
This responds to the applicant’s submission of February 10, 2020 in response to Office action issued August 8, 2019 in which the examining attorney refused registration under Trademark Act Section 2(d). For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 5675981. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
TRADEMARK ACT SECTION 2(d) FINAL REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark was and remains refused due to a likelihood of confusion with the mark in U.S. Registration No. 5675981. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
The examining attorney provided ample arguments and evidence to support the refusal in the prior Office action, and these are incorporated herein by reference. The examining attorney has summarized the refusal for the applicant’s convenience in addition to addressing applicant’s arguments below.
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.
Applicant’s standard-character mark is INSIDER for the following services:
“Publishing of electronic publications” in Class 41.
Registrant’s standard-character mark is INSIDER, INC. for the following goods and services:
“Downloadable software in the nature of mobile applications for providing articles, news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle” in Class 9;
“Advertising and promotional services; Marketing services; Market research; Online advertising; Promoting the goods and services of others; and Conducting opinion polls online” in Class 35; and
“Providing an interactive website featuring non-downloadable videos containing news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle; Electronic publishing services, namely, publication of text and graphic works of others online featuring articles, news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle; Digital video, audio, and multimedia publishing services; Video production services; Educational services, namely, arranging and conducting conferences and seminars in the fields of national and international politics, business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle” in Class 41.
SIMILARITY OF THE 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant does not argue that the marks are dissimilar.
In this case, the applicant’s mark INSIDER is completely incorporated into the registrant’s mark INSIDER, INC. While the marks differ in that the registrant’s mark also contains the business designation “INC.”, this difference is slight and does not obviate likelihood of confusion between the applicant’s and registrant’s marks.
The presence of the additional wording “INC.” in registrant’s mark does not distinguish the mark from the applicant’s as this wording does not have the capacity to identify the source of registrant’s goods and services. Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Son’s” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998).
Further, “INC.” has been disclaimed in registrant’s mark. Disclaimed matter 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).
The applied-for mark INSIDER is incorporated into registrant’s mark as the first word of registrant’s mark, INSIDER, INC.. The informational and disclaimed matter in registrant’s mark, “INC.”, does not distinguish registrant’s mark from the applicant’s. Therefore, the marks are confusingly similar.
SIMILARITY OF THE SERVICES
In this case, the application uses broad wording to describe “publishing of electronic publications.” Applicant’s wording presumably encompasses all services of the type described, including registrant’s more narrow “electronic publishing services, namely, publication of text and graphic works of others online featuring articles, news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle; Digital video, audio, and multimedia publishing 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)).
Applicant argues that the consumers of applicant’s and registrant’s services at issue are sophisticated, although no evidence has been provided in support of this argument. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Applicant further argues that the applicant commenced use of the mark at an earlier date than registrant’s date of registration. Applicant also argues that applicant’s successful registration of the mark INSIDER SUMMIT in U.S. Registration No. 5942573 weighs in favor of registration of the mark at issue in this application.
Applicant’s claim of priority of use is not relevant to this ex parte review. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv). Further, the services under applicant’s registration INSIDER SUMMIT, a copy of which was not provided with applicant’s reply, are “arranging and conducting business conferences” and are unrelated to the services at issue here.
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.
Accordingly, with the contemporaneous use of sufficiently similar marks INSIDER and INSIDER, INC. for electronic publishing services, consumers are likely to conclude that the services are related and originate from a single source. As such, refusal of registration must be made final under Trademark Act Section 2(d).
RESPONSE GUIDELINES
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Cheryl Kluwe/
Cheryl Kluwe
Examining Attorney
Law Office 126
(571) 270-3839
cheryl.kluwe@uspto.gov
RESPONSE GUIDANCE