Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 03, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 4, 2020.

 

In a previous Office action dated March 9, 2020, the trademark examining attorney refused registration of the applied-for mark based on a likelihood of confusion with multiple marks. In addition applicant was required to clarify the identification of goods and services and to submit an acceptable specimen for the services in Class 35.  Finally applicant was informed of a prior-filed application which could pose a likelihood of confusion if it registered.

 

Applicant submitted a new specimen and amended the identification of services, satisfying those requirements.  See TMEP §§713.02, 714.04.  However applicant’s arguments were unpersuasive and the refusal was maintained.  Applicant has submitted a signed consent agreement between itself and the owner of the earlier-filed pending application, obviating that potential refusal. Applicant has also argued against the likelihood of confusion refusals. 

 

However the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion – This Refusal Applies Only to the Services Identified Therein

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – THIS REFUSAL APPLIES ONLY TO THE SERVICES IDENTIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks REMEDY, REMEDY HEALTH MEDIA and DIGITAL REMEDY in U.S. Registration Nos. 4400687, 4720423, 5333500, 5333509, and 5333511 for the services “Development of advertising campaigns for television, print media and web pages via production of video and audio content; Post-production editing services for video and audio commercials”  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

The applied-for mark REMEDY and the registered mark REMEDY 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. 

 

The applied-for mark REMEDY also makes a similar commercial impression as the marks REMEDY HEALTH MEDIA and DIGITAL REMEDY because it merely deletes descriptive wording from the registered marks.  Although marks are compared in their entireties, consumers are generally more likely to focus on non-descriptive wording, as descriptive wording is commonly used by multiple third parties and is less likely to be recognized as source identifying.  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).  Thus, matter that has been disclaimed as descriptive is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).  In this case “HEALTH MEDIA” and “DIGITAL” have been disclaimed by the registrant’s because these words are descriptive of the connected advertising services.  Consumers are therefore unlikely to be able to distinguish the otherwise identical marks from one another.

 

COMPARISON OF THE SERVICES

 

Applicant’s mark is for the services “Development of advertising campaigns for television, print media and web pages via production of video and audio content; Post-production editing services for video and audio commercials”.

 

The cited registrations are for the following services:

 

REMEDY (standard character), Registration No. 85422414, for “Advertising, marketing and promotional services in the field of health, namely, promoting the health-related products or services of others; conducting online surveys in the field of health; conducting online polls in the field of health; arranging for discounts on health-related products and services for subscribing members; prescription drug and health product order fulfillment services; providing an website featuring consumer information in the field of consumer health education products and services,” in International Class 035, in relevant part;

 

REMEDY HEALTH MEDIA (standard character), Registration No. 4720423, for “Advertising, marketing and promotional services in the field of health, namely, promoting the health-related products or services of others; conducting online surveys in the field of health; conducting online polls in the field of health; arranging for discounts on health-related products and services for subscribing members; providing an informational website in the field of consumer health education,” in International Class 035, in relevant part;

 

DIGITAL REMEDY (standard character), Registration No. 5333500, for “Advertising via electronic media and specifically the Internet, dissemination of advertising for others via the Internet and an online communications network on the Internet, evaluating and reporting the effectiveness of online advertising mediums and campaigns with ad serving, tracking, and reporting services and technologies for advertisers and publishers, and providing advertising and business management consultancy, all the foregoing in the fields of automotive, apparel, consumer goods, current events, education, automobile and home insurance, tourism, and web and mobile apps,” in International Class 035;

 

DIGITAL REMEDY (plus design), Registration No. 5333509, for “Advertising via electronic media and specifically the Internet, dissemination of advertising for others via the Internet and an online communications network on the Internet, evaluating and reporting the effectiveness of online advertising mediums and campaigns with ad serving, tracking, and reporting services and technologies for advertisers and publishers, and providing advertising and business management consultancy, all the foregoing in the fields of automotive, apparel, consumer goods, current events, education, automobile and home insurance, tourism, and web and mobile apps,” in International Class 035; and,

 

DIGITAL REMEDY (plus design), Registration No. 5333511, for “Advertising via electronic media and specifically the Internet, dissemination of advertising for others via the Internet and an online communications network on the Internet, evaluating and reporting the effectiveness of online advertising mediums and campaigns with ad serving, tracking, and reporting services and technologies for advertisers and publishers, and providing advertising and business management consultancy, all the foregoing in the fields of automotive, apparel, consumer goods, current events, education, automobile and home insurance, tourism, and web and mobile apps,” in International Class 035.

 

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).

 

Applicant’s advertising services are related in purpose to the advertising services in the registrations.    Applicant’s services include the development of advertising campaigns   via the production of video and audio content.  These services directly overlap in purpose and nature as the advertising services in the registrations.  Advertising firms generally provide a wide swatch of complementary services alongside each other including services such as those listed in the application and the registrations.  Please see the attached evidence from Brafton, Green Buzz Agency, Pennylane and Ruckus Marketing showing examples of advertising agencies providing a wide variety of related services, including video production services and advertising services for the health care field.  The attached Internet evidence establishes that the relevant services are similar or complementary in terms of purpose or function and are often provided alongside each other.  Thus, applicant’s and registrants’ 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).

 

Applicant argues that its identification amendments eliminate any likelihood of confusion.  This argument is unpersuasive.  As the attached evidence shows, advertising services such as the ones refused are routinely provided alongside advertising services such as those listed in the registrations, resulting in a likelihood of confusion.

 

In conclusion, because the applied-for mark and the registered mark make similar commercial impressions and because the services are closely related there is a likelihood of confusion between the applied-for mark and the registered marks and the applied-for mark must be refused registration under Trademark Act Section 2(d).

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

 

Class 35: Development of advertising campaigns for television, print media and web pages via production of video and audio content; Post-production editing services for video and audio commercials

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only:

 

Class 35: Video production services in the field of employment recruiting;

 

Class 41: Photography; Photography services; Rental of video equipment; Rental services for audio and video equipment; Video production services; Charitable services, namely, providing facilities and equipment for video production; Film and video production.

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 May 03, 2021 for

U.S. Trademark Application Serial No. 88706851

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 May 03, 2021, 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.”