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. 88514911
Mark: THE HUB
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Correspondence Address:
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Applicant: Global Hub, Corp.
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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: October 09, 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:
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3066654, 3281894, 3357717, 5003649, 5125376, and 5836772. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is THE HUB (in standard characters) for the following goods and services:
CLASS 25 – “Shirts; Shirts for infants, babies, toddlers and children; Graphic T-shirts; Hooded sweat shirts; Sweat shirts; T-shirts ;”
CLASS 35 – “Business networking; Business consultation in the field of education leadership development; On-line business networking services; On-line professional networking services; Organizing business networking events in the field of Change management and service leadership; Organizing business networking events in the field of social and environmental services; Organizing business networking events in the field of civic engagement;” and
CLASS 41 – “ Education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of change management and service leadership; Education services, namely, providing panel discussions in the field of change management and service leadership; Education services, namely, training educators to teach through service learning and civic engagement and providing curricula in connection therewith; Educational services, namely, providing continuing professional education courses in the field of change management and service leadership; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members; Leadership development training in the field of change management and service leadership; Providing education courses in the field of change management and service leadership offered through online, non-downloadable videos and instructor assistance; Providing education in the field of change management and service leadership rendered through correspondence courses; Providing education in the field of change management and service leadership rendered through video conference.”
Registrants’ marks are:
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Reg. No. |
Mark |
Goods/Services in Relevant Part |
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3066654 |
THE HUB |
“Providing facilities for business meetings” in Class 35 |
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3281894 |
THE HUB FACTOR |
“Business consulting and information services; Business marketing consulting services; Business networking” in Class 35 |
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3357717 |
THE | HUB |
“Providing an interactive, educational web site in the fields of business management, engineering… via an on-line computer network” in Class 41 |
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5003649 |
SPORTSMAN’S HUB |
“Wearing apparel, namely, t-shirts, hats, jackets, sweatshirts, and sweatpants” in Class 25 |
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5125376 |
SOCK HUB |
“Hosiery; Socks” in Class 25 |
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5836772 |
BABYHUB |
“Clothing for babies, namely, pants, tops, shirts, jumpers, cardigans, hoodies, sweatshirts, t-shirts” in Class 25 |
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. 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.
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).
Registration No. 4291892
Applicant’s mark is THE HUB in standard characters.
Registrant’s mark is also THE HUB in standard characters.
Registration No. 3357717
Applicant’s mark is THE HUB in standard characters.
Registrant’s mark is THE | HUB & Design.
As such, the word marks are identical in appearance, sound, meaning, and commercial impression. The fact that registrant’s mark is presented in stylized type and features a design element does not diminish its similarity to applicant’s mark or obviate confusion. 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 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)). Therefore, the design in registrant’s mark does not overcome the similarity of the shared wording. Therefore, the marks are confusingly similar.
Registration No. 3281894
Applicant’s mark is THE HUB in standard characters.
Registrant’s mark is also THE HUB FACTOR in standard characters.
Applicant’s mark and registrant’s mark are similar because they share the identical wording THE HUB. In fact, it appears that applicant has merely deleted the additional wording FACTOR in registrant’s mark. However, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Registration Nos. 5003649, 5125376, and 5836772
Applicant’s mark is THE HUB in standard characters.
Reg. No. 5003649 is SPORTSMAN’S HUB in standard characters.
Reg. No. 5125376 is SOCK HUB in stylized font.
Reg. No. 5836772 is BABYHUB in standard characters.
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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods 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). In the present case, the words SPORTSMAN’S and SOCK have been disclaimed by registrants for being descriptive of or generic for registrants’ goods. Moreover, the word BABY in Reg. No. 5836772 is also descriptive of registrant’s goods because it identifies the intended users of registrant’s “clothing for babies.” Thus, the words SPORTSMAN’S, BABY and SOCK are less significant in terms of affecting the marks’ commercial impression, and render the wording HUB the more dominant element of the registered marks.
Consequently, the dominant part of registrants’ marks and the dominant portion of applicant’s mark are identical in appearance, sound, connotation, and commercial impression. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Therefore, it is this identical wording HUB in the marks that will cause consumers to believe that the respective goods and services emanate from a single source. This is especially true because the mere deletion of the additional words SPORTSMAN’S, BABY and SOCK from registrants’ marks does not otherwise affect the overall similarity of the marks in terms of commercial impression. See Id. Therefore, the marks are confusingly similar.
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods and services 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and 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)); TMEP §1207.01(a)(i).
Applicant’s Goods vs Reg. Nos. 5003649, 5125376, and 5836772
In this case, the application includes “t-shirts, sweatshirts” and “shirts for babies.” Meanwhile, registrants have identified “wearing apparel, namely, t-shirts, sweatshirts” in Registration No. 5003649 and “clothing for babies, namely, shirts” in Registration No. 5836772. Therefore, these goods are virtually identical and it is presumed that the channels of trade and class(es) of purchasers are the same for the goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Moreover, Registration No. 5003649 uses broad wording to describe “t-shirts” and “sweatshirts” which presumably encompasses all goods of the type described, including applicant’s more specific “graphic t-shirts” and “hooded sweatshirts.” 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 goods 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’s Class 35 Services vs Reg. Nos. 3066654 and 3281894
In this case, the application and Registration No. 3281894 include identical services, namely, “business networking” in International Class 35. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Moreover, registrant’s “business consulting services” and “business networking” services are broadly worded to encompass applicant’s more specific “business consultation in the field of education leadership development” and “on-line business networking services; on-line professional networking services; organizing business networking events in the field of change management and service leadership; organizing business networking events in the field of social and environmental services; organizing business networking events in the field of civic engagement.” Similarity, registrant has identified “business consulting services.” Thus, applicant’s and registrant’s services are legally identical in significant part.
Applicant’s services are closely related to the registrant’s services in Registration No. 3066654. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, “business networking” and “providing facilities for business meetings,” are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Applicant’s Class 41 Services vs Reg. No. 3357717
Applicant’s educational services in International Class 41 are closely related to the services identified in the cited registration. Specifically, registrant has identified “providing an interactive, educational web site in the fields of business management … via an on-line computer network.” Meanwhile, applicant provides a number of educational services “in the field of change management,” as specified in the identification. The attached Internet evidence from TechTarget, Wikipedia, Upcounsel and Science.edu shows that “change management” and “business management” deal with the transition or transformation of an organization’s goals or processes including making organizational change. Therefore, the respective services are closely related because they involve the provision of education for the same field of use.
The services are also closely related in that they are marketed to the same consumers through the same trade channels and are often associated with a single source. The attached Internet evidence consists of web pages from third party educational institutions Portland State University, Mangates, Wilmington University and Alison.com which show that the same provider of educational web sites in the field of business management [registrant’s website] also renders education services in the fields of change management and service leadership [applicant’s services]. Therefore, this evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark. This evidence also shows that the respective services are commonly provided in the same trade channels to the same classes of consumers. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, because the marks are confusingly similar and the goods and services are closely related, there is a likelihood of confusion as to the source of the applicant’s goods and services. Accordingly, applicant’s mark is refused registration under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Advisory - Prior-Filed Application (Limited to Class 25)
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
/Miroslav Novakovic/
RESPONSE GUIDANCE
