United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88800272
Mark: CERTIFIED LOVER BOY
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Correspondence Address:
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Applicant: Common Sense Counsel
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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: April 22, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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).
In this case, the applicant’s mark is “CERTIFIED LOVER BOY” for:
“Audio and video recordings featuring music and artistic performances; Digital media streaming devices; Digital media hubs; Digital media receivers; Downloadable computer software for manipulating digital audio information for use in audio media applications; Downloadable musical sound recordings; Media players; Digital media servers; Digital music downloadable from the Internet” in Class 009
“Belts; Boots; Coats; Dress shirts; Dresses; Hats; Jackets; Jerseys; Leggings; Pants; Parkas; Polo shirts; Shirts; Shoes; Shorts; Skirts; Sneakers; Socks; Suits; Sweat pants; Sweat shirts; Tee shirts; Ties as clothing; Track suits; Undergarments; Yoga pants; Athletic shirts; Bathrobes; Blouses; Hooded sweat shirts” in Class 025
“Entertainment information services, namely, providing information and news releases about a musical artist; Entertainment services in the nature of recording, production and post-production services in the field of music; Entertainment services, namely, televised appearances by a professional entertainer; Entertainment, namely, live music concerts; Entertainment, namely, production of television shows; Entertainment, namely, production of movies; Entertainment, namely, production of music; Film and video film production; Film studios; Production of music; Television, video and movie filming services; Arranging and conducting nightclub entertainment events; Arranging and conducting nightclub parties; Entertainment services in the nature of an ongoing reality based television program; Entertainment services in the nature of organizing social entertainment events; Production of films; Providing a website featuring information in the field of music and entertainment” on Class 041
The registrants’ marks are:
Registrant #1
US Reg. No. 3516118 “LOVERBOY” for “Clothing, namely, underwear, thongs, [ bath robes, T-shirts, ] sleepwear, shorts [ and adult theme costumes ].”
US Reg. No. 2893663 “LOVERBOY” for “Mail order catalog services featuring intimate apparel for men, active wear for men, day wear apparel for men, swim wear, leather wear [, wardrobe accessories such as shoes, belts, hats and jewelry ].”
US Reg. No. 2657480 “LOVERBOY” for “Clothing, namely, baseball caps, nightshirts, lingerie, T-shirts, sweatshirts, shorts, coats and jackets”
Registrant #2
US Reg. No. 1305371 “LOVERBOY” for “Entertainment Services-Namely, a Vocal and/or Instrumental Group”
Thus, the marks are so similar in their appearance, sound, connotation and commercial impression, that there is a likelihood of confusion. Therefore, the similarity prong of the test to determine likelihood of confusion is satisfied.
Comparison of the Goods and Services
Based on the aforementioned standard, the applicant’s goods and services are closely related to the registrants’ goods and services because they could be marketed and sold together and/or in the same channels of trade.
Specifically, with regard to ‘118 and ‘480, both parties provide various clothing identical in part and otherwise closely related. With regard to ‘663, the use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii). Therefore, the applicant’s clothing is related to the registrant’s mail order catalog services featuring similar clothing. Please see websites from Ralph Lauren, Tommy Hilfiger and Ann Taylor – which all provide both clothing as well as retail store services featuring clothing, that include email/catalog subscription options.
With regard to ‘371, its “Entertainment Services-Namely, a Vocal and/or Instrumental Group” could include applicant’s “Entertainment services, namely, televised appearances by a professional entertainer; Entertainment, namely, live music concerts.” Additionally, it is common for entertainment groups and companies to also provide music production services, entertainment information, news releases, etc.
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
Conclusion
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(s) and/or requirement(s) 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.
/tfrazier/
Tamara Frazier
Trademark Attorney
Law Office 116
(571) 272-8256
tamara.frazier@uspto.gov
RESPONSE GUIDANCE