United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88751745
Mark: EOS
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Correspondence Address: |
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Applicant: Bravo, Michelle
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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: May 28, 2020
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 THE ISSUES:
PRIOR-FILED APPLICATION – ADVISORY
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 mark in the referenced application. 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.
However, Applicant must respond to the refusal and requirements below.
SECTION 2(d) LIKELIHOOD OF CONFUSION – REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks listed below. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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.
Applicant seeks registration of the mark EOS for:
“Lifestyle coaching in the fields of personal, inter-relationship, and professional improvement” in International Class 041.
“Aromatherapy services; body work therapy services; therapeutic massage therapy services, namely, providing lymphatic, acupressure, deep tissue and swedish massage” in International Class 044.
“Clairsentient therapy, namely, evaluating the physio-emotional state of the human body of each individual by means of life force analysis, advising and mentoring on ways to correct imbalances through body advocacy, body awareness and body maintenance practices; somatic therapy, namely, teaching self-advocacy through healthy body awareness, self-support and self-maintenance practices with regard to the impact of past trauma of the physio-emotional and mental state of the individual” in International Class 045.
The registered marks that pertain to the Class 041 refusal are:
The registered marks that pertain to the Classes 044 and 045 refusal are:
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).
In the present case, Applicant’s EOS mark is confusingly similar to Registrants’ marks in terms of appearance, sound, and commercial impression because all the marks contain the wording EOS. 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). Here, Applicant’s and Registrants’ marks share the identical term EOS; thus, they appear and sound identical in part.
Moreover, please note that when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
The compared goods and 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 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).
Determining likelihood of confusion is based on the description of the goods and 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)).
With respect to Class 041, the services of the parties are related because they are encompassing. 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). Specifically, the application uses broad wording to describe its lifestyle coaching in the fields of personal, inter-relationship, and professional improvement, without specifying the aspect of life that is the subject of the coaching, which presumably encompasses all services of the type described, including the more narrowly-defined entrepreneurship training services in U.S. Registration No. 3432932, the business and leadership training and coaching services in U.S. Registration No. 5429480, and the personal training and physical fitness training to individuals to help them make improvement in their daily living in U.S. Registration Nos. 4837772, 5750051, and 4837772. Accordingly, the services of the parties are related.
With respect to International Classes 044 and 045, Applicant’s services are related to Registrants’ goods and services, as demonstrated by the attached evidence. The attached Internet evidence, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and services and that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See:
Thus, Applicant’s and Registrants’ goods and 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).
Conclusion
Because Applicant's and Registrants’ marks are similar and because the goods and services are related, Applicant's mark must be refused registration pursuant to Section 2(d) of the Lanham Act.
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.
IDENTIFICATION OF THE SERVICES – CLARIFICATION REQUIRED
Applicant’s current identification of the services in Class 045 is not acceptable and requires clarification. Specifically, the wording in Class 045 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass medical therapy services in Class 044 or spiritual therapy services in Class 045. Thus, Applicant must clarify the nature of the services and ensure their proper classification. If Applicant adds classes to the application, Applicant must comply with the multiple-class application requirements set out below.
The remainder of the wording in the identification is acceptable, but Applicant is strongly urged to adopt the minor suggestions.
Suggested Identification
Applicant may substitute the following wording, if accurate:
International Class 041: Lifestyle coaching in the fields of personal, inter-relationship, and professional improvement specifically related to {indicate subject matter, e.g., spiritual well-being, managing personal finances}
International Class 044: No changes suggested
International Class 045: Providing holistic spiritual counseling services by way of clairsentient therapy, namely, evaluating the physio-emotional state of the human body of each individual by means of life force analysis, advising and mentoring on ways to correct imbalances through body advocacy, body awareness and body maintenance practices; providing holistic spiritual counseling services by way of somatic therapy, namely, teaching self-advocacy through healthy body awareness, self-support and self-maintenance practices with regard to the impact of past trauma of the physio-emotional and mental state of the individual
Amendment Guidelines
Applicant’s goods and 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 goods and services or add goods and 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 goods and 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 goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY
The application identifies services in more than one international class; therefore, Applicant must satisfy all the requirements below for each international class:
List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Because the potential additional Class (044) is already in the application, no additional fee is required.
Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
Submit a specimen for each international class. The current specimen is acceptable for all classes. See more information about specimens.
Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and requirements in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Xheneta Ademi/
Xheneta Ademi
Trademark Attorney
Law Office 130/Innovation Lab
571-272-7151
xheneta.ademi@uspto.gov
RESPONSE GUIDANCE