To: | The Lede Company LLC (tlee@pryorcashman.com) |
Subject: | U.S. Trademark Application Serial No. 88632447 - LEDE - 23026.00002 |
Sent: | January 03, 2020 02:51:16 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88632447
Mark: LEDE
|
|
Correspondence Address:
|
|
Applicant: The Lede Company LLC
|
|
Reference/Docket No. 23026.00002
Correspondence Email Address: |
|
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: January 03, 2020
Summary of Issues Applicant Must Address:
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5324280 (LEDE). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison 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 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).
In the present case, applicant’s mark is LEDE and registrant’s mark is LEDE. 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). 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.
Comparison of the Services
Applicant’s services are identified as:
Class 35: Public relations; brand concept, brand development and brand management services for high profile institutions and individuals in the media, tech, fashion, music, film, television and entertainment industries including but not limited to celebrities, recording artists, A-list pop stars, promising newcomers, live event and touring companies, actors, authors, models, fashion houses, digital influencers, tastemakers, record labels, political leaders, top executives, hedge funds, private equity firms, technology start ups, trade associations and labor unions
Registrant’s services are identified, in pertinent part, as:
Class 35: Advertising, marketing, and promotional services; placement and dissemination of advertising for others via the internet and other electronic communication networks; advertising consulting services in the nature of tracking, measuring, and targeting of advertising of others via the internet and other electronic communication networks ***
The comparison of the parties’ services is based on the plain language of the identifications themselves.
In this case, the parties’ services are related because they encompass each other.
Absent restrictions in an application and/or registration, the identified services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.
Registrant’s “advertising, marketing, and promotional services” encompasses all types and aspects of such services, including applicant’s more specific “Public relations; brand concept, brand development and brand management services for high profile institutions and individuals in the media, tech, fashion, music, film, television and entertainment industries including but not limited to celebrities, recording artists, A-list pop stars, promising newcomers, live event and touring companies, actors, authors, models, fashion houses, digital influencers, tastemakers, record labels, political leaders, top executives, hedge funds, private equity firms, technology start ups, trade associations and labor unions” and vice versa.
First, the attached definition from AHDictionary.com shows that “public relations” can involve the “art or science of establishing and promoting a favorable relationship with the public” or “the methods and activities employed to establish and promote a favorable relationship with the public”. Thus, registrant’s “promotional services” encompasses applicant’s “public relations” services.
Second, the attached evidence from Merriam-Webster.com shows that “brand” can refer to “a public image, reputation, or identity conceived of as something to be marketed or promoted.” Thus, applicant’s “advertising, marketing, and promotional services” (which are variations on a theme) encompasses applicant’s “brand concept, brand development and brand management services”. Though applicant specifies that these services are for “high profile institutions and individuals in the media, tech, fashion, music, film, television and entertainment industries including but not limited to celebrities, recording artists, A-list pop stars, promising newcomers, live event and touring companies, actors, authors, models, fashion houses, digital influencers, tastemakers, record labels, political leaders, top executives, hedge funds, private equity firms, technology start ups, trade associations and labor unions,” there is nothing in registrant’s “advertising, marketing, and promotional services” confining such services to any particular group, thus including applicant’s specified customers.
Accordingly, since the parties’ LEDE marks are identical and their services encompass each other, confusion is likely pursuant to Section 2(d) of the Trademark Act.
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.
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.
/Parker Howard/
Examining Attorney
USPTO
Law Office 117
(571) 272-6548
Parker.Howard@uspto.gov
RESPONSE GUIDANCE