To: | Hyena (joshbombart@laughinghyena.com) |
Subject: | U.S. Trademark Application Serial No. 88606124 - HYENA - N/A |
Sent: | December 13, 2019 01:11:42 PM |
Sent As: | ecom109@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88606124
Mark: HYENA
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Correspondence Address:
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Applicant: Hyena
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 13, 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.
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. 2412448 and 2903228. 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 for the standard character mark having the literal element “HYENA” for goods identified as “Downloadable mobile applications for comedy entertainment.”
The registrants’ marks are as follows:
Mark |
Registration No. |
Relevant Goods/Services |
LAUGHING HYENA |
2412448 |
“Pre-recorded audio tapes, records and compact discs featuring music and comedy acts” |
HYENA FILMS |
2903228 |
“Entertainment services, namely, production and distribution of motion pictures” |
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/or 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/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.
SIMILARITY OF THE MARKS
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
Applicant’s mark is “HYENA” in standard characters, and registrant’s mark is “LAUGHING HYENA” in standard characters.
In addition, consumers are often known to use shortened forms of names, and it is highly likely that registrant and its mark would be referred to as simply “HYENA.” Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”).
Therefore, as both applicant’s and registrant’s marks are substantially similar in sound, appearance, meaning, and overall commercial impression, the marks are considered similar for likelihood of confusion purposes.
Applicant’s mark is “HYENA” in standard characters, and registrant’s mark is “HYENA FILMS” in standard characters.
With respect to registrant’s mark, 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 and/or services 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). Therefore, as registrant has disclaimed the term “FILM” as it is descriptive of registrant’s services, it is the term “HYENA” which represents the dominant element of the mark.
To that point, the dominant element of applicant’s mark is “HYENA” and registrant’s mark is “HYENA FILMS.” These elements of the 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.
RELATEDNESS OF THE GOODS AND SERVICES
In addition to the marks being substantially similar, the goods and/or services in this comparison are also related.
The goods and/or 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/or 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/or 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).
Thus, the parties’ respective goods and/or services are related for likelihood of confusion purposes.
Upon encountering either applicant’s mark “HYENA” or registrants’ marks “HYENA FILMS” or “LAUGHING HYENA” as used in connection with the parties’ goods and/or services, consumers are likely to be confused and mistakenly believe that the goods and/or services emanate from a single source. As such, applicant’s mark must be refused registration.
AMENDMENT TO THE IDENTIFICATION OF GOODS
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Full Suggested Identifications
In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.
Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.
Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc., and if software is content- or field-specific, the content or field of use}.” In such case, applicant must supply the required information within the brackets and must remove the brackets from the identification of goods and/or services.
Applicant may substitute the following wording if acceptable and accurate:
In Class 9:
“Downloadable mobile applications for {specify function and purpose of the mobile application, e.g., for streaming audiovisual and multimedia content} in the field of comedy entertainment
Scope Advisory and Identification of Manual Reference
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.
COMMUNICATIONS WITH THE TRADEMARK OFFICE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Lauren R. Roncoroni/
Lauren R. Roncoroni
Trademark Examining Attorney
Law Office 109
(571) 270-5661
Lauren.Roncoroni@uspto.gov
RESPONSE GUIDANCE