To: | Katherine Aguilera (ccaprio@sinclairlouis.com) |
Subject: | U.S. Trademark Application Serial No. 88567120 - THE TREEHOUSE - N/A |
Sent: | November 12, 2019 06:04:00 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88567120
Mark: THE TREEHOUSE
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Correspondence Address: |
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Applicant: Katherine Aguilera
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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: November 12, 2019
SUMMARY OF ISSUES:
· Application Not Entitled to Register – Earlier-Filed Pending Applications – 88105797, 88105815
· Identification of Services
· Addition of a Class
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (5)
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2156045, 4780712, 4780713, 5885551 and 5885552. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Comparison of Marks
Applicant seeks to register:
THE TREEHOUSE (standard characters)
The registrants own and use the marks:
TREEHOUSE (standard characters)(Reg. 2156045)
TREE TH HOUSE (stylized with design)(Reg. 4780712)
TREE TH HOUSE (stylized with design)(Reg. 4780713)
TREEHOUSE (standard characters)(Reg. 5885551)
TREEHOUSE (with design)(Reg. 5885552)
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).
With regard to Registration Nos. 2156045 and 5885551, applicant’s mark is identical to that of the registrants but for applicant’s addition of the word “THE” before “TREEHOUSE.” The inclusion of the term “THE” does not diminish the overall similarity between the marks.
With regard to Registration Nos. 4780712, 4780713 and 5885552, 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)).
Here, the registrants’ addition of the stylized letters “TH” only affirm the dominant feature of the mark “TREE HOUSE.” Likewise, the addition of a stylized leaf only supports the dominant feature of the mark “TREEHOUSE” and does not obviate a likelihood of confusion.
The marks sound alike, are spelled alike and they both have similar commercial impressions.
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 Goods and Services
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).
Applicant seeks to register its mark for “Behavioral and educational coaching and counseling services to children and adults” in Classes 041 and 045 potentially.
The registrants use their marks on the following:
TREEHOUSE (standard characters)(Reg. 2156045) and TREE TH HOUSE (stylized with design)(Regs. 4780712 and 4780713) for:
“educational services, namely, conducting seminars and workshops in various areas confronting troubled youths and their parents” in Class 041 and “counseling programs for troubled youths and their families, provided during and in connection with individual and group meetings, camping, fishing and other recreational activities, and retreats” in Class 042/045.
TREEHOUSE (standard characters)(Reg. 5885551) and TREEHOUSE (with design)(Reg. 5885552) for, inter alia:
“downloadable educational course materials in the field of educational interventions, support and mentoring, creating student-created educational plans, educational planning, monitoring and counseling, educational activities, trips and camps” in Class 009.
In this case, the application uses broad wording to describe its behavioral and educational coaching and counseling services, which presumably encompass all goods and services of the type described, including the registrants’ more narrow educational and counseling services for troubled youths and their parents and educational course materials including interventions, support, mentoring and counseling. 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 and 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 goods and/or 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 goods and services are related.
In sum, since the marks are identical and the goods and services related and complementary, there is a substantial likelihood that purchasers would be confused as to the source of the goods and services. As such, the mark is refused under Section 2(d) of the Trademark Act.
In addition, two mark(s) in prior-filed pending applications may present a bar to registration of applicant’s mark, see below.
APPLICATION NOT ENTITLED TO REGISTER – EARLIER-FILED PENDING APPLICATIONS (2)
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 marks in the referenced applications. 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.
OPPORTUNITY TO RESPOND
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
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.
Current Identification: Behavioral and educational coaching and counseling services to children and adults
Applicant may adopt any of the following wording, if accurate:
Class 041:
Personal and professional cognitive behavioral and educational coaching services in the field of personal improvement for children as well as related educational consultation provided to their parents and to school administration;
Personal and professional cognitive behavioral and educational coaching services in the field of coping strategies for people affected by learning disabilities, namely, attention deficit hyperactivity disorder (ADD), attention deficit disorder (ADD) and other disorders featuring executive functioning challenges provided to preschool and school-aged children, as well as related educational consultation provided to their parents and to school administration.
Class 045 (add):
Providing emotional counseling and emotional support services for families of children with emotional and/or behavioral difficulties, developmental delays, learning disabilities and other educational or health related disabilities.
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.
ADDITION OF A CLASS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two (2) classes; however, applicant submitted a fee(s) sufficient for only one (1) class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 041; and applicant needs a specimen for class 045. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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/
Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
tricia.sonneborn@uspto.gov
RESPONSE GUIDANCE