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:  May 19, 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 ISSUES:

• Prior-Filed Application
• Section 2(d) Refusal – Likelihood of Confusion

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88641932 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5906336, 5834025, and 4449897.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

In the present case, the applicant seeks registration of DOPAMINE in standard character form for:

·         “Magazine paper; Printed magazines and newsletters in the field of general human interest” in Class 16; and

·         “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines” in Class 41.  

 

The cited registered marks are:

·         DOPAMINE in standard character form for “Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, videos, multimedia entertainment content” in Class 41;

·         DOPAMINE in standard character form for “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels” in Class 35; and

·         SLING DOPAMINE in Standard character form for “Educational kits sold as a unit in the field of inspirational, motivational, and personal development and relationship building consisting primarily of paper stationery and posters with messages imprinted thereon” in Class 16.

 

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 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 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).

 

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).

 

DOPAMINE (U.S. REG. NO. 5906336) and DOPAMINE (U.S. REG. NO. 4449897)

 

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 mark is DOPAMINE in standard character form and registrants’ marks are DOPAMINE in standard character form and DOPAMINE in standard character form.  These marks 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 services.  Id.

 

Therefore, the marks are confusingly similar. 

 

SLING DOPAMINE (U.S. REG. NO. 5834025)

 

Here, applicant’s mark is DOPAMINE in standard character form, and registrant’s mark is SLING DOPAMINE in standard character form. In this case, the wording DOPAMINE in the registered mark is identical in sound and highly similar in appearance and commercial impression. 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); TMEP §1207.01(b)(ii)-(iii).

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

In this case, the only difference between the respective marks is the additional wording SLING in the registered mark. This difference does not change the identical nature in sound and highly similar nature in appearance and commercial impression between the applied-for mark, DOPAMINE, and the wording DOPAMINE in the registered mark.

 

Considering the above, the marks are sufficiently similar to cause a likelihood of confusion under Trademark Act Section 2(d).

 

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/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).

 

DOPAMINE (U.S. REG. NO. 5906336)

 

In this case, applicant’s mark is DOPAMINE in standard character form for, inter alia:

·         “Printed magazines and newsletters in the field of general human interest” in Class 16; and

·         “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines” in Class 41.  

 

The cited registered mark is DOPAMINE in standard character form for “Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, videos, multimedia entertainment content” in Class 41.

 

Here, the respective goods and services are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “Printed magazines and newsletters in the field of general human interest,” “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines,” and “Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, videos, multimedia entertainment content” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark 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.  Thus, applicant’s and registrant’s 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). See attached evidence from:

·         Southern Living:

o   http://www.magazine.store/?containerName=ia3vvsm18&utm_source=southernliving.com&utm_medium=owned&utm_campaign=bx_i004slr1w1977db;

o   http://www.southernliving.com/news/the-southern-living-tv-show;

·         GQ:

o   http://www.gq.com/;

o   http://www.youtube.com/channel/UCsEukrAd64fqA7FjwkmZ_Dw;

·         Vanity Fair:

o   http://www.vanityfair.com/; and

o   http://www.youtube.com/channel/UCIsbLox_y9dCIMLd8tdC6qg.

 

Thus, upon encountering DOPAMINE for “Printed magazines and newsletters in the field of general human interest” and “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines,” and DOPAMINE for “Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, videos, multimedia entertainment content,” consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.

 

DOPAMINE (U.S. REG. NO. 4449897)

 

In this case, applicant’s mark is DOPAMINE in standard character form for, inter alia:

·         “Printed magazines and newsletters in the field of general human interest” in Class 16; and

·         “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines” in Class 41.  

 

The cited registered mark is DOPAMINE in standard character form for “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels” in Class 35.

 

Here, the respective goods and services are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “Printed magazines and newsletters in the field of general human interest,” “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines,” and “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark 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.  Thus, applicant’s and registrant’s 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). See attached evidence from:

·         Hearst:

o   http://www.hearst.com/magazines;

o   http://www.hearst.com/-/hearst-magazines-creates-digital-media-unit-to-capitalize-on-emerging-technologies;

·         National Geographic:

o   http://www.nationalgeographic.com/magazine/;

o   http://disneyadsales.com/our-brands/national-geographic/;

·         LifeRich Publishing:

o   http://www.liferichpublishing.com/Default.aspx; and

o   http://www.liferichpublishing.com/ServiceStore/ServiceList.aspx?Service=CAST-804.

 

Thus, upon encountering DOPAMINE for “Printed magazines and newsletters in the field of general human interest” and “Magazine publishing; Publication of magazines; Publication of books, magazines, almanacs and journals; Publication of electronic magazines; Publishing of books, magazines; Publishing of web magazines,” and DOPAMINE for “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels,” consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.

 

SLING DOPAMINE (U.S. REG. NO. 5834025)

 

In this case, applicant’s mark is DOPAMINE in standard character form for, inter alia, “Printed magazines and newsletters in the field of general human interest” in Class 16

 

The cited registered mark is SLING DOPAMINE in Standard character form for “Educational kits sold as a unit in the field of inspirational, motivational, and personal development and relationship building consisting primarily of paper stationery and posters with messages imprinted thereon” in Class 16.

 

Here, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that printed magazines in the field of general human interest and educational kits are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods 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). See attached evidence from:

·         Scholastic:

o   http://shop.scholastic.com/teachers-ecommerce/teacher/books-and-magazines/magazines.html;

o   http://shop.scholastic.com/teachers-ecommerce/teacher/shops/teaching-kits.html;

·         National Geographic:

o   http://www.nationalgeographic.com/subscribe/kids-magazines-bundle;

o   http://www.natgeokids.com/za/kids-club/entertainment/general-entertainment/national-geographic-educational-products/;

·         Highlights:

o   http://www.highlights.com/store/highlights-magazines-for-kids; and

o   http://www.highlights.com/store/puzzle-book-clubs/puzzle-buzz.

 

Thus, upon encountering DOPAMINE for printed magazines in the field of general human interest and SLING DOPAMINE for educational kits, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.

 

Therefore, with the contemporaneous use of highly similar marks, consumers are likely to conclude that the goods and services are related and originate from the same source. As such, registration must be refused under Trademark Act Section 2(d).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

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.

 

TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this 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. 

 

QUESTIONS

 

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 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.    

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@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 19, 2020 for

U.S. Trademark Application Serial No. 88807189

 

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. 

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@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 19, 2020, 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.”