To: | Lifetime Entertainment Services, LLC (trademarks.us@dentons.com) |
Subject: | U.S. Trademark Application Serial No. 88510113 - SUPERNANNY - 216026085453 |
Sent: | February 28, 2020 07:38:20 AM |
Sent As: | ecom117@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. 88510113
Mark: SUPERNANNY
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Correspondence Address:
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Applicant: Lifetime Entertainment Services, LLC
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Reference/Docket No. 216026085453
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: February 28, 2020
This Office action is in response to applicant’s communication filed on February 5, 2020. Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 3147001 and 3393605. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). Also, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 has applied to register the mark SUPERNANNY for use in connection with the following services:
Entertainment services, namely, a multimedia program series featuring subjects of general human interest distributed via various platforms across multiple forms of transmission media; entertainment services, namely, an ongoing television series featuring subjects of general human interest; providing a website featuring entertainment information.
Registration No. 3147001 is for the mark SUPERNANNY for use in connection with the following services:
Entertainment services, namely, television, cable television, and satellite television and internet programs featuring reality genre in the field of family relationships; distribution of television, cable television, satellite television and internet programs for others; television program syndication.
Registration No. 3393605 is for the mark SUPER NANNY for use in connection with the following services:
Entertainment and information services to users via the Internet, mobile telephone, television, namely, on-going television programs in the field of reality based programming; provision of information and interactive information and interactive media relating to child education and children services, namely, information regarding child safety, child care services, child day care services provided on line from a computer network.
Both registrations are owned by the same registrant.
Similarity of the Marks
With regard to the ‘001 registration, applicant’s mark is SUPERNANNY and registrant’s mark is SUPERNANNY. 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.
With regard to the ‘605 registration, applicant’s mark is SUPERNANNY and registrant’s mark is SUPER NANNY. The compared marks are identical except for a slight difference in appearance between applicant’s mark, which appears as a compound word with no space separating the words, and registrant’s mark, which appears as multiple words with space separating the words. As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical.”).
Based upon the foregoing, the marks of applicant and registrant are confusingly similar. Applicant has submitted no arguments to the contrary.
Relatedness of the Services
In this case, the application uses broad wording to describe “Entertainment services, namely, a multimedia program series featuring subjects of general human interest distributed via various platforms across multiple forms of transmission media; entertainment services, namely, an ongoing television series featuring subjects of general human interest,” which presumably encompasses all services of the type described, including registrant’s more narrow “Entertainment services, namely, television, cable television, and satellite television and internet programs featuring reality genre in the field of family relationships.” Similarly, applicant’s “providing a website featuring entertainment information” encompasses registrant’s “Entertainment and information services to users via the Internet, mobile telephone, television, namely, on-going television programs in the field of reality based programming.” 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)).
Additionally, 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. This is especially so in light of the fact that the marks of applicant and registrant are identical or nearly identical.
Applicant “requests that the potential citation refusals be withdrawn.” However, applicant has provided no arguments or evidence in support of this request.
Because the marks of applicant and registrant are confusingly similar and the respective services are closely related, a likelihood of confusion exists in the present case. Registration therefore is refused under Section 2(d) of the Trademark Act. The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
The refusal to register under Section 2(d) of the Trademark Act is continued and made FINAL.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The Trademark Trial and Appeal Board has determined that “if the word ‘super’ is combined with a word [that] names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services.” In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002) (holding SUPER SILK merely laudatory and descriptive of applicant’s shirts being of an excellent, first-rate, or superior grade of silk fabric), quoted in In re Positec Grp. Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013) (holding SUPERJAWS merely descriptive of applicant’s various machine tools, hand tools, and heavy-duty workbench accessories as superior vice systems for grasping and holding work pieces); see In re Carter-Wallace, Inc., 222 USPQ 729, 730 (TTAB 1984) (holding SUPER GEL merely laudatory and descriptive of applicant’s shaving gel being of superior quality).
Applicant has applied to register the mark SUPERNANNY for use in connection with the following services:
Entertainment services, namely, a multimedia program series featuring subjects of general human interest distributed via various platforms across multiple forms of transmission media; entertainment services, namely, an ongoing television series featuring subjects of general human interest; providing a website featuring entertainment information.
The previously attached definition from the Lexico Dictionary defines “super” as “Very good or pleasant; excellent.” See the previously attached definition 1. “Nanny” is defined as “A person, typically a woman, employed to look after a child in its own home.” See the previously attached definition 1. When used in connection with the identified services, “super nanny” immediately describes a multimedia program series featuring a person employed to look after a child in its own home that is of excellent quality.
This conclusion is supported by the attached printout from applicant’s website. The website states “Drawing on 30 years of professional experience, Jo is back to help stressed-out parents tackle social and behavioral challenges as well as new issues faced by modern-day families.” “Jo” is also referred to as “Nanny Jo.” See the attached printout. This evidence supports the conclusion that “nanny” is merely descriptive of the multimedia program services.
The examining attorney notes that the cited registrations discussed supra were both registered on the Supplemental Register. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Applicant “requests that it has use of the mark and the mark should be registrable on the Principal Register.” The examining attorney finds this assertion unavailing. As an initial matter, applicant filed the application under a Section 1(b) intent-to-use filing basis and has not filed an amendment to allege use. Applicant therefore has not submitted any evidence in support of its claim of use. In any event, the fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983); TMEP §1209.03(c).
The refusal to register under Section 2(e)(1) of the Trademark Act is continued and made FINAL.
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).
/William D Jackson/
Attorney Advisor - Trademarks
U.S. Patent and Trademark Office
Law Office 117
(571) 272-3064
William.Jackson@uspto.gov
RESPONSE GUIDANCE