To: | Green, Kristopher (Michael@PatentLawNY.com) |
Subject: | U.S. Trademark Application Serial No. 88576226 - GREENHOUSE - KGR001 |
Sent: | November 27, 2019 02:19:07 PM |
Sent As: | ecom123@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88576226
Mark: GREENHOUSE
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Correspondence Address:
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Applicant: Green, Kristopher
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Reference/Docket No. KGR001
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 27, 2019
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s applied-for mark is GREENHOUSE for: [relevant services only]
Class 041 - Post-production editing services in the field of music; Production of audio recording
Registrant’s mark is GREENHOUSE and GREENHOUSE plus design for: [relevant services only]
Class 041 - Entertainment services, namely, night clubs; music provided by DJs and live musical performances by bands and other performers at nightclubs
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 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 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 [services] and differences in the marks.”); TMEP §1207.01.
COMPARISON OF THE MARKS
Applicant’s applied-for mark is GREENHOUSE. Registrant’s mark is GREENHOUSE and GREENHOUSE plus design.
In the present case, applicant’s mark is GREENHOUSE and one of registrant’s mark is GREENHOUSE. 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 services. Id.
Therefore, the marks are confusingly similar.
Although registrant’s other mark contains a design in addition to the term GREENHOUSE, this does not obviate the fact that the word-portions are identical because consumers are more likely to request, and remember, goods and services by the word portion of a mark rather than any associated design.
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)).
As applicant’s and registrant’s marks are identical or highly similar, this factor weighs in favor of a finding of likelihood of confusion.
COMPARISON OF THE SERVICES
Applicant’s services are: [relevant services only]
Class 041 - Post-production editing services in the field of music; Production of audio recording
Registrant’s services are: [relevant services only]
Class 041 - Entertainment services, namely, night clubs; music provided by DJs and live musical performances by bands and other performers at nightclubs
· http://en.wikipedia.org/wiki/Steve_Aoki
· http://calvinharrisvegas.com/
· http://en.wikipedia.org/wiki/Calvin_Harris
· http://shop.diplo.com/products/europa-ep-vinyl-digital
· http://en.wikipedia.org/wiki/Diplo
As applicant’s and registrant’s marks are highly similar and applicant’s and registrant’s services are related, registration must be partially refused for likelihood of confusion.
PARTIAL ABANDONMENT ADVISORY
If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 041 will be deleted from the application:
Class 041 - Post-production editing services in the field of music; Production of audio recording
The application will then proceed with the following goods and services in International Classes 009 and 041 only:
Class 009 - Digital media, namely, downloadable audio and video content featuring independently produced movies and music on behalf of others
Class 041 - Distribution of motion picture films; Film and video film production; Post-production editing services in the fields of videos and film
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
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
If the applicant has any questions or requires assistance in responding to this Office Action, please telephone or email the assigned examining attorney.
/Cori Stedman/
Cori Stedman
Examining Attorney Law Office 123
US Patent and Trademark Office
cori.stedman@uspto.gov
571-270-5090
RESPONSE GUIDANCE