To: | Sogorka, Amber (ambers@me.com) |
Subject: | U.S. Trademark Application Serial No. 88654320 - GLOW UP - N/A |
Sent: | January 17, 2020 08:38:30 AM |
Sent As: | ecom122@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 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88654320
Mark: GLOW UP
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Correspondence Address:
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Applicant: Sogorka, Amber
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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: January 17, 2020
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
Applicant’s mark is GLOW UP for Nutrition coaching services.
Registrant’s mark is GLO for “Education and entertainment services, namely, online instruction in the fields of exercise, fitness, music and health-related matters; providing online information via a global computer network on the subjects of exercise, fitness and music; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for streaming featuring exercise, fitness, music, and health-related matters; providing blogs in the nature of an online journal over the Internet featuring exercise, fitness, music, and health-related matters; providing a website featuring non-downloadable audio-visual content, specifically, motion pictures, videos, music videos, music, video clips, audio clips, music clips, film clips, and photographs, in the fields of exercise, fitness, and music; consulting services in the fields of exercise and fitness; physical fitness instruction; physical fitness training services; providing a web site featuring information on exercise and fitness; providing information in the field of fitness and exercise; electronic publishing services, namely, publishing of online works of others featuring user-created text, audio, video, and graphics related to fitness, exercise, wellness, nutrition and health-related issues,” in Class 041 and “Providing a website featuring informational, non-downloadable audio-visual content, specifically, photographic, audio and video presentations in the fields of health-related matters, namely, health, wellness, and nutrition; consulting services in the fields of health-related matters, namely, health, wellness, and nutrition; providing information in the fields of health-related matters, namely, health, wellness, and nutrition,” in Class 044.
Standard of Law
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.
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).
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).
Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).
Therefore, the marks have closely similar appearances, sound, meanings, and overall commercial impressions, such that this factor weighs in favor of a likelihood of confusion.
Comparison of the Goods and Services and Trade Channels
Applicant’s services are Nutrition coaching services. Registrant’s services are Education and entertainment services, namely, online instruction in the fields of exercise, fitness, music and health-related matters; providing online information via a global computer network on the subjects of exercise, fitness and music; electronic publishing services, namely, publication of text, graphics, photographs, images, and audio-visual works of others online for streaming featuring exercise, fitness, music, and health-related matters; providing blogs in the nature of an online journal over the Internet featuring exercise, fitness, music, and health-related matters; providing a website featuring non-downloadable audio-visual content, specifically, motion pictures, videos, music videos, music, video clips, audio clips, music clips, film clips, and photographs, in the fields of exercise, fitness, and music; consulting services in the fields of exercise and fitness; physical fitness instruction; physical fitness training services; providing a web site featuring information on exercise and fitness; providing information in the field of fitness and exercise; electronic publishing services, namely, publishing of online works of others featuring user-created text, audio, video, and graphics related to fitness, exercise, wellness, nutrition and health-related issues,” in Class 041 and “Providing a website featuring informational, non-downloadable audio-visual content, specifically, photographic, audio and video presentations in the fields of health-related matters, namely, health, wellness, and nutrition; consulting services in the fields of health-related matters, namely, health, wellness, and nutrition; providing information in the fields of health-related matters, namely, health, wellness, and nutrition,” in Class 044.
Applicant’s and Registrant’s Goods and/or Services Are Related
Here, applicant’s services and registrant’s services are related because they are commonly offered by the same companies under the same mark and sold through the same trade channels to the same consumers. Therefore, consumers are accustomed to these goods/services emanating from the same source.
The attached Internet evidence consists of:
2. http://www.ipersonaltrainer.net/personal-trainer/united-states;
4. http://www.ipersonaltrainer.net/trainer/albertogonzalez; and
5. http://www.ipersonaltrainer.net/trainer/reyuresti;
This evidence establishes that the same entity commonly manufactures/produces/provides the relevant goods and/or services and markets the goods and/or services under the same mark, and the goods and/or services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and/or 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).
Therefore, applicant’s goods and/or services are related to registrant’s goods and/or services which weighs in favor of a likelihood of confusion.
Conclusion
In sum, the similarities between the marks’ appearances, sounds, meanings, and overall commercial impressions combined with the close relationship between the goods and/or services results in a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.
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.
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.
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
/Jeff Molinoff/
Jeffrey S Molinoff
US Patent & Trademark Office
Examining Attorney
Law Office 122
571.272.7290
jeffrey.molinoff@uspto.gov
RESPONSE GUIDANCE