To: | BAIS EDUCATION & TECHNOLOGY CO., LTD. (firm@rabinberdo.com) |
Subject: | U.S. Trademark Application Serial No. 88503515 - ANIMATH CREATIVE CONFIDENCE FUTURE - GEN-319TM |
Sent: | September 27, 2019 04:17:52 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88503515
Mark: ANIMATH CREATIVE CONFIDENCE FUTURE
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Correspondence Address: 1101 14TH STREET, N.W., SUITE 500
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Applicant: BAIS EDUCATION & TECHNOLOGY CO., LTD.
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Reference/Docket No. GEN-319TM
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 27, 2019
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
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.
Trademark Act Section 2(d) Refusal to Register
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4105104 and 2768624. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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. The Marks
The applicant seeks to register “ANIMATH CREATIVE CONFIDENCE FUTURE” AND DESIGN and the registered marks are “ANI ART ACADEMIES” (with a disclaimer of ART ACADEMIES) and “ANI.” The marks are similar because they all begin with ANI. The first part of a mark is most likely to catch the eye and ear and make an impression on the purchaser’s memory. Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d 1698 (Fed. Cir. 1992).
The presence of the disclaimed wording ART ACADEMIES in the mark “ANI ART ACADEMIES” AND DESIGN does not obviate the similarity of the marks because 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).
Although the same registered mark also includes a design element, 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)).
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).
Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).
B. The Goods/Services
The applicant uses its mark in connection with educational services and training and the registered marks are used in connection with “Education services, namely, providing classes, seminars, workshops, and courses in the field of art” and “Educational services, namely, conducting computer training courses and seminars for computer network professionals.” The goods/services of the parties are identical.
Based on the similarity of the marks and relatedness of the goods/services, consumers are likely to be confused by the marks into believing that the goods/services of the parties share a common source or sponsorship.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Requirements
A. Disclaimer
Therefore, applicant may request to withdraw this disclaimer from the application. If applicant does not expressly request its withdrawal, the disclaimer will remain in the application and will be printed on the registration certificate.
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.
The identification of services is indefinite and must be clarified by specifying the nature of the education academies (e.g., providing courses of instruction at the high school, college and post graduate level); indicating that arranging and conducting of colloquiums and arranging and conducting of conferences are in the field of education; specifying that correspondence courses are educational services and specifying the field; indicating that education information is providing information on education; clarifying the type of educational services provided by schools (e.g., classes, and specify the subject matter); specifying the nature of the entertainment services (e.g., providing entertainment information); indicating that game services provided online from a computer network is a providing on-line computer games services; specifying the field of the know-how transfer; specifying the field of the in-person educational forums; indicating the type of online electronic publications, not downloadable, and specifying their field; indicating the subject matter featured in the online videos, not downloadable; specifying the field of the entertainment competitions (e.g., athletics, spelling, math); specifying the subject matter of the practical training demonstration; specifying the field of the arranged seminars, and symposiums; specifying the nature and field of the educational services and instruction services (e.g., classes in the field of math); and specifying the field of the workshops in arranging and conducting of workshops. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate: Education academies, namely, providing courses of instruction at the high school level; arranging and conducting of educational colloquiums; arranging and conducting of educational conferences; providing education in the field of [SPECIFY] rendered through correspondence courses; providing information on education; educational examination; educational services provided by schools, namely, providing classes, seminars and lectures in the field of [SPECIFY]; electronic desktop publishing; entertainment services, namely, providing entertainment information; film distribution; providing online computer games; games equipment rental; arranging and conducting of in-person educational forums in the field of [SPECIFY]; training services in the field of know-how transfer related to [SPECIFY subject matter]; language interpreter services; layout services, other than for advertising purposes; lending library services; mobile library services; bookmobile services; nursery schools; online publication of electronic books and journals; providing online electronic publications in the nature of books and magazines, not downloadable, in the field of [SPECIFY]; providing online videos, not downloadable, in the field of [SPECIFY]; organization of education or entertainment competitions in the field of athletics, spelling and math; organization of exhibitions for cultural or educational purposes; practical training demonstration on the subject of [SPECIFY]; publication of [SPECIFY subject matter, e.g., musical] texts; publication of books; arranging and conducting of seminars in the field of [SPECIFY]; arranging and conducting of symposiums in the field of [SPECIFY]; educational teaching services, namely, conducting workshops in the field of [SPECIFY]; educational services namely, conducting classes in the field of [SPECIFY]; instruction services, namely, conducting seminars in the field of [SPECIFY]; vocational guidance; arranging and conducting of workshops in the field of [SPECIFY], in Class 41.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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.
/Vivian Micznik First/
Examining Attorney
Law Office 114
571-272-9159
vivian.first@uspto.gov
RESPONSE GUIDANCE