Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  November 16, 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.

 

SUMMARY OF ISSUES

 

• Section 2(d) Refusal – Likelihood of Confusion
• Amendment to Identification & Classification of Services Required
• Multiple-Class Application Requirements

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES ONLY TO CLASSES 35 & 41

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2699424. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant’s mark is 160/90 (stylized) for, in relevant part, the following services:

 

·       “Arranging personal appearances by persons working in the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts; business marketing consulting services; creative marketing design services; advertising and marketing services, namely, promoting and marketing the goods and services of others through all public communications means; advertising, marketing and business management consultancy; product merchandising for others; sales promotion services for others; direct marketing services; direct marketing consulting services; direct marketing advertising for others; customer relationship management services; promoting the goods and services of others by arranging for businesses to affiliate their goods and services with the goods and services of third parties by means of sponsorship relationships; public relations; negotiation of business contracts for others; event planning and management for marketing, branding, promoting or advertising the goods and services of others; special event planning for business purposes; special event planning for commercial, promotional or advertising purposes; business meeting planning; business consulting, management and planning services in the field of entrepreneurship and start-up ventures; business development consulting services in the field of entrepreneurship and start-up ventures; market research services; business consulting, management and planning services for commercial enterprises; sales incentive plans” in International Class 35; and

·       “Providing websites featuring information, news, videos, images and audio content in the fields of film, theatre, music, television, entertainment, sports, mass participation competitions and events, and culinary arts; providing online non-downloadable magazines, newspapers, articles, electronic books, newsletters, and videos in the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts; organizing, arranging, conducting and producing events in the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts; entertainment services in the nature of development, creation, production, distribution, and post-production of multimedia entertainment content; publication of texts, books, magazines and other printed matter; publishing of electronic publications; data analysis services relating to the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts” in International Class 41.

 

The registrant’s mark is ONESIXTYOVERNINETY (wherein the term “OVER” appears upside down) for “Advertising agencies, namely, promoting the services of the financial, pharmaceutical, consumer, and not for profit industries, through the development of electronic, printed, video and audio promotional materials and by rendering sales promotion and brand identity advice; advertising services, namely providing advertising space in periodicals and dissemination of advertising matter” in International Class 35.

 

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 goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity 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 instance, the marks at issue contain similar terms or phrases, namely, “ONESIXTY” and “NINETY” in the registered mark, and the numeric equivalent of these phrases or terms in the applicant’s mark, namely, “160” and “90”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

The fact that the applied-for-mark does not contain the term “OVER”, which is found in the registrant’s mark, will not obviate the likelihood of confusion between the marks because the forward slash in the applicant’s mark can be read out as “over”, thereby giving the impression of the number “160” in the applicant’s mark being “over” the number “90”. (See attached evidence showing that a slash may be read out as “over”). Thus, the marks could be referred to and said in the same manner. In other words, while the marks are not visually identical or similar, they connote the same overall meaning and therefore commercial impression of “ONE SIXTY” or “160” over “NINETY” or “90”. Consumer confusion has been held likely for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning.  Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); see In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); TMEP §1207.01(b).

 

Based on the foregoing, the marks are confusingly similar.

 

Relatedness of the Services

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe the services, “promoting and marketing the goods and services of others through all public communications means,” which presumably encompasses all services of the type described, including registrant’s more narrowly identified services, “promoting the services of the financial, pharmaceutical, consumer, and not for profit industries, through the development of electronic, printed, video and audio promotional materials and by rendering sales promotion and brand identity advice.” 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 registrant’s 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 registrant’s services are related.

 

Furthermore, the compared 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 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).

 

The attached Internet evidence shows that it is common for third parties to provide the applicant’s and registrant’s services under the same name. (See attached). For example:

 

• http://momentumresults.com/ (provides a variety of services related to marketing, advertising, media, media production, brand development, market research and analysis, event planning, and organizing and executing events, under the same name);
• http://targetmktng.com/ (provides a variety of services related to digital marketing, including market research, digital advertising, publicity, and design and development of websites and media campaigns, under the same name);
• http://thewilliamsagency.net/ (provides a variety of marketing services, event planning and production, media planning, market research, and public relations services, and also provides news and information on their website regarding events on food, culture, and the arts, under the same name);
• http://www.justflownh.com/ (provides a variety of marketing services, event planning, promotional advertising, design of websites and promotional materials services, and providing information related to entertainment, food, and the arts, under the same name); and
• http://wcgpros.com/ (provides a variety of services related to brand development, designing campaign strategies, advertising, public relations, marketing, and video production and animation, under the same name).

 

This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s 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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

AMENDMENT TO IDENTIFICATION & CLASSIFICATION OF SERVICES REQUIRED

The identification of services is unacceptable and must be clarified because it contains indefinite wording, and wording that is too broad and includes services that could be classified in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. For example:

 

• “sales incentive plants” in Class 35 must further clarify the nature of the services, since these services could refer to the actual provision of an incentive award program to promote the sale of goods and services of others in Class 35 or promoting the sale of goods or services of others via an incentive award program in Class 35 as well;
• “Travel agency services” in Class 39 must further clarify and specify the type of service being provided since this wording encompasses and therefore includes a variety of travel related services that are classified in different classes depending on the nature of the service being provided, such as “issuing traveler’s checks” classified in Class 36, “making reservations and bookings for transportation” classified in Class 39, and “making reservations and bookings for temporary lodging and for restaurants and meals” in Class 43;
• “Providing websites featuring information, news, videos, images and audio content in the fields of film, theatre, music, television, entertainment, sports, mass participation competitions and events, and culinary arts” in Class 41 must further clarify the type of information and news being provided in order to properly classify the services, since providing business information and news is classified in Class 35, while entertainment information and news is classified in Class 41; in addition, applicant must further clarify the format of the videos, images, and audio content being provided;
• “organizing, arranging, conducting and producing events in the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts” must further clarify the purpose of these services since some of the listed events could encompass the organization of events for commercial, promotional or advertising purposes in Class 35, or organization of events for cultural or entertainment purposes in Class 41; in addition, the wording “organizing, arranging, conducting and producing events in the fields of… entertainment” must further clarify the type of entertainment field; and
• “data analysis services relating to the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts” in Class 41 must further clarify the nature or type of data analysis services being offered in order to properly classify these services since they encompass and therefore include “business data analysis” in Class 35, “financial data analysis” in Class 36, or services related to analyzing educational test scores data for others in Class 41.

 

Applicant may substitute the following wording, if accurate:

 

Class 35: “Arranging personal appearances by persons working in the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts; business marketing consulting services; creative marketing design services; advertising and marketing services, namely, promoting and marketing the goods and services of others through all public communications means; advertising, marketing and business management consultancy; product merchandising for others; sales promotion services for others; direct marketing services; direct marketing consulting services; direct marketing advertising for others; customer relationship management services; promoting the goods and services of others by arranging for businesses to affiliate their goods and services with the goods and services of third parties by means of sponsorship relationships; public relations; negotiation of business contracts for others; event planning and management for marketing, branding, promoting or advertising the goods and services of others; special event planning for business purposes; special event planning for commercial, promotional or advertising purposes; business meeting planning; business consulting, management and planning services in the field of entrepreneurship and start-up ventures; business development consulting services in the field of entrepreneurship and start-up ventures; market research services; business consulting, management and planning services for commercial enterprises; sales incentive plans in the nature of incentive award programs to promote the sale of products and services of others; business data analysis services relating to the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts; Providing websites featuring business information and business news in the fields of film, theatre, music, television, sports, mass participation competitions and events, and culinary arts”

 

Class 36: “Financial valuation services; travel agency services, namely, issuing traveler’s checks; financial data analysis services relating to the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts”

 

Class 39: “Travel agency services, namely, making reservations and bookings for transportation”

 

Class 41: “Providing websites featuring entertainment information, entertainment news, non-downloadable videos, non-downloadable images in the nature of photographs or visual recordings and non-downloadable audio content in the nature of audio recordings in the fields of film, theatre, music, television, sports, mass participation competitions and events, and culinary arts; providing online non-downloadable magazines, newspapers, articles, electronic books, newsletters, and videos in the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts; organizing, arranging, conducting and producing events in the fields of film, theatre, music, television, social entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts, for cultural or entertainment purposes; entertainment services in the nature of development, creation, production, distribution, and post-production of multimedia entertainment content; publication of texts, books, magazines and other printed matter; publishing of electronic publications; data analysis services in the nature of analyzing educational test scores data for others relating to the fields of film, theatre, music, television, entertainment, sports, fashion, esports, mass participation competitions and events, and culinary arts”

 

Class 43: “Travel agency services, namely, making reservations and bookings for temporary lodging, restaurants, and meals.”

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 fees already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes. Applicant must either submit the filing fee for the class not covered by the submitted fees or restrict the application to the number of classes covered by the fees 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.

 

 

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 regarding this Office Action, please telephone or email the assigned examining attorney.

 

 

/Keyla Gandara/

Trademark Examining Attorney

Law Office 117

Telephone: (571) 272-7164

Email: Keyla.Gandara@USPTO.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 16, 2019 for

U.S. Trademark Application Serial No. 88660040

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Keyla Gandara/

Trademark Examining Attorney

Law Office 117

Telephone: (571) 272-7164

Email: Keyla.Gandara@USPTO.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 16, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”