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. 88569097
Mark: SUGAR
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Correspondence Address: 171 N. ABERDEEN ST., SUITE 400
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Applicant: Pupcake Sugar
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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 13, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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. 4843672, 5057877, 5492115, 5905135, 4517118 and 4620572. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant has applied to register the mark SUGAR in standard character format for “Entertainment, namely, live events hosted by a dog named Sugar; entertainment, namely, publishing a website featuring blogs and non-downloadable publications in the nature of dog-friendly recipes and stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, producing and publishing an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, providing online non-downloadable comics” in class 041.
The mark in Registration No. 4843672 is SUGAR CRUSH in standard character format for in pertinent part “Comic books” in class 016.
The mark in Registration No. 5057877 is SUGAR & CLOTH in standard character format for “Providing a website featuring blogs, non-downloadable publications in the nature of articles, non-downloadable photographs, non-downloadable videos, and non-downloadable tutorial videos in the fields of travel, recipes, cooking, baking, cocktails, ingredients, culinary travel, photography, home design and decor, gardening, party planning, and decorating” in class 041.
The mark in Registration No. 5492115 is SUGARNECK in standard character format for in pertinent part “Arranging, organizing, conducting, and hosting social entertainment events” in class 041.
The mark in Registration No. 5905135 is SUGAR AND TOYS in standard character format for “Entertainment services, namely, the provision of continuing television shows and series featuring animation, comedy, culture, live action, music, social commentary, mock commercials, mock public service announcements, and parody delivered by broadcast television, cable television, satellite television, wireless networks and online computer networks” in class 041.
The mark in Registration No. 4517118 is POPSUGAR in standard character format for in pertinent part “providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of celebrity gossip, fashion, pop culture, beauty, fitness, lifestyle, shopping and entertainment” in class 041.
The mark in Registration No. 4620572 is POPSUGAR in a stylized format with star design for in pertinent part “providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of celebrity gossip, fashion, pop culture, beauty, fitness, lifestyle, shopping and entertainment” in class 041.
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 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 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.
Comparison 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)); TMEP §1207.01(b).
In this case, applicant’s mark SUGAR is confusingly similar to the marks SUGAR CRUSH in Registration No. 4843672, SUGAR & CLOTH in Registration No. 5057877, SUGARNECK in Registration No. 5492115, SUGAR AND TOYS in Registration No. 5905135 and POPSUGAR in Registration Nos. 4517118 and 4620572. Specifically, SUGAR in applicant’s mark is highly similar in sound and appearance to the SUGAR in registrants’ marks in Registration Nos. 4843672, 5057877, 5492115, 5905135, 4517118 and 4620572. Further, this shared word means “A sweet crystalline or powdered substance, white when pure, consisting of sucrose obtained mainly from sugarcane and sugar beets and used in many foods, drinks, and medicines to improve their taste.” See http://www.ahdictionary.com/word/search.html?q=sugar.
Moreover, the applicant’s mark SUGAR is wholly encompassed within the registrants’ marks SUGAR CRUSH in Registration No. 4843672, SUGAR & CLOTH in Registration No. 5057877, SUGARNECK in Registration No. 5492115, SUGAR AND TOYS in Registration No. 5905135 and POPSUGAR in Registration Nos. 4517118 and 4620572, thus, purchasers are likely to believe that registrants’ marks merely identify additional lines of comic book goods and website services, social entertainment event services and television show services. Specifically, purchasers are likely to believe that the marks SUGAR CRUSH in Registration No. 4843672, SUGAR & CLOTH in Registration No. 5057877, SUGARNECK in Registration No. 5492115, SUGAR AND TOYS in Registration No. 5905135 and POPSUGAR in Registration Nos. 4517118 and 4620572, identify new lines of comic book goods and website services, social entertainment event services and television show services offered under the SUGAR line of live event services, website services, animated series services and non-downloadable comics. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Furthermore, applicant’s mark SUGAR is in standard character format, which means applicant can put their mark in any design, therefore, registrant’s design elements in Registration No. 4620572 do not rule out the similarity of the word SUGAR in the marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In summary, because of the contemporaneous use of the distinctive word SUGAR, it follows that purchasers are likely to believe that the marks identify the same source for comic book goods and website services, social entertainment event services, television show services, live event services, animated series services and non-downloadable comics. Thus, the marks are confusingly similar.
Comparison of the Goods & Services
The applicant’s services are “Entertainment, namely, live events hosted by a dog named Sugar; entertainment, namely, publishing a website featuring blogs and non-downloadable publications in the nature of dog-friendly recipes and stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, producing and publishing an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, providing online non-downloadable comics” in class 041.
The registrant’s goods in Registration No. 4843672 are in pertinent part “Comic books” in class 016.
The registrant’s services in Registration No. 5057877 are “Providing a website featuring blogs, non-downloadable publications in the nature of articles, non-downloadable photographs, non-downloadable videos, and non-downloadable tutorial videos in the fields of travel, recipes, cooking, baking, cocktails, ingredients, culinary travel, photography, home design and decor, gardening, party planning, and decorating” in class 041.
The registrant’s services in Registration No. 5492115 are in pertinent part “Arranging, organizing, conducting, and hosting social entertainment events” in class 041.
The registrant’s services in Registration No. 5905135 are “Entertainment services, namely, the provision of continuing television shows and series featuring animation, comedy, culture, live action, music, social commentary, mock commercials, mock public service announcements, and parody delivered by broadcast television, cable television, satellite television, wireless networks and online computer networks” in class 041.
The registrant’s services in Registration No. 4517118 are in pertinent part “providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of celebrity gossip, fashion, pop culture, beauty, fitness, lifestyle, shopping and entertainment” in class 041.
The registrant’s services in Registration No. 4620572 are in pertinent part “providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of celebrity gossip, fashion, pop culture, beauty, fitness, lifestyle, shopping and entertainment” in class 041.
As the case law and attached evidence shows, the applicant's live event services, website services, animated series services and non-downloadable comics, registrant’s comic book goods in Registration No. 4843672, registrant’s website services in Registration No. 5057877, registrant’s social entertainment event services in Registration No. 5492115, registrant’s television show and series services in Registration No. 5905135 and registrant’s website services in Registration Nos. 4517118 and 4620572 are commercially related, because registrants’ broad identifications encompass applicant’s narrower identification and many companies provide these types of goods and services.
In this case, the registrations use broad wording to describe “Providing a website featuring blogs, non-downloadable publications in the nature of articles, non-downloadable photographs, non-downloadable videos, and non-downloadable tutorial videos in the fields of travel, recipes, cooking, baking, cocktails, ingredients, culinary travel, photography, home design and decor, gardening, party planning, and decorating” in Registration No. 5057877, “Arranging, organizing, conducting, and hosting social entertainment events” in Registration No. 5492115, “Entertainment services, namely, the provision of continuing television shows and series featuring animation, comedy, culture, live action, music, social commentary, mock commercials, mock public service announcements, and parody delivered by broadcast television, cable television, satellite television, wireless networks and online computer networks” in Registration No. 5905135 and “providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of celebrity gossip, fashion, pop culture, beauty, fitness, lifestyle, shopping and entertainment” in Registration Nos. 4517118 and 4620572, which presumably encompasses all services of the type described, including applicant’s more narrow identification of “Entertainment, namely, live events hosted by a dog named Sugar; entertainment, namely, publishing a website featuring blogs and non-downloadable publications in the nature of dog-friendly recipes and stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, producing and publishing an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship”. 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 registrants’ 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 registrants’ services are related.
Moreover, the attached Internet evidence consists of screenshots from Dark Circle Comics, Dark Horse Comics, DC Comics and Marvel. See http://darkcirclecomics.com/, http://www.darkhorse.com/Comics/3002-822/Stranger-Things-SIX-2, http://www.dccomics.com/comics/house-of-whispers-2018/house-of-whispers-1 and http://www.marvel.com/comics/issue/82596/tomb_of_dracula_facsimile_edition_2019_1. This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Thus, applicant’s and registrants’ goods and 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). Accordingly, purchasers are likely to be confused as to the source of the services when they encounter comic book goods and website services, social entertainment event services, television show services, live event services, animated series services and non-downloadable comics offered under highly similar marks. Therefore, applicant's services and registrants’ goods and services are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the goods and services are related. Therefore, purchasers are likely to be confused as to the source of the goods and services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
PRIOR FILED APPLICATIONS NOTICE
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.
IDENTIFICATION OF SERVICES REQUIREMENT – PARTIAL REQUIREMENT
This requirement only applies to the following services: “Entertainment, namely, live events hosted by a dog named Sugar; entertainment, namely, publishing a website featuring blogs and non-downloadable publications in the nature of dog-friendly recipes and stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, producing and publishing an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship” in class 041.
The wording “entertainment, namely, producing and publishing an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship” in the identification of services is indefinite and must be clarified because applicant must further specify the type of production and publishing services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 041: “Entertainment services, namely, arranging and conducting live special events hosted by a dog named Sugar for social entertainment purposes; entertainment services, namely, providing a website featuring blogs and non-downloadable publications in the nature of articles featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment services, namely, producing ongoing television programs consisting of an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment services, namely, publishing multimedia files featuring an animated series featuring stories about a dog named Sugar in the fields of lifestyle and entrepreneurship; entertainment, namely, providing online non-downloadable comics”
Class 043: “providing a website featuring dog-friendly recipes”
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.
MUTLIPLE CLASS APPLICATION REQUIREMENTS
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fee or restrict the application to the number of classes covered by the fee already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
CHARACTER NAME ADVISORY
The name of a character is registrable as a trademark or service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the services in addition to identifying the character. In re Caserta, 46 USPQ2d at 1090; In re Fla. Cypress Gardens Inc., 208 USPQ 288, 292 (TTAB 1980); see TMEP §§1202.10, 1301.02(b).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE
