To: | Hairbrained.Me Corp (trademarks@dbllawyers.com) |
Subject: | U.S. Trademark Application Serial No. 88807888 - HAIRBRAINED - 58260 |
Sent: | June 21, 2021 05:56:37 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88807888
Mark: HAIRBRAINED
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Correspondence Address:
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Applicant: Hairbrained.Me Corp
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Reference/Docket No. 58260
Correspondence Email Address: |
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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: June 21, 2021
The application was suspended awaiting the cancellation proceeding pertaining to the cited prior registration. The cancellation was terminated.
Further, 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 that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION-CLASS 35 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5740668. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant’s mark is HAIRBRAINED for:
IC 035. US 100 101 102. G & S: On-line retail store services featuring tools used by professional hairdressers, colorists, and barbers, including items such as scissors, combs, brushes, and foils, tickets to live events hosted by hairbrained or professional hairdressers. FIRST USE: 20090201. FIRST USE IN COMMERCE: 20120201
Registrant’s mark is HAIR BRAIN for Hair clips.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
The respective marks are highly similar in appearance, sound and meaning. The marks are HAIRBRAINED and HAIR BRAIN and the only differences are space between the terms in the registrant’s mark and the applicant uses a different form of the term BRAIN. The marks have the same overall commercial impression and are nearly identical in sound, appearance and meaning. As a result, the marks are confusingly similar.
Relatedness of the Goods
The applicant’s services are closely related to the registrant’s goods. The applicant is providing retail store services featuring tools used by professional hairdressers, colorists, and barbers, including items such as scissors, combs, brushes, and foils, tickets to live events hosted by hairbrained or professional hairdressers. The language is broad and could include hair clips.
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 Country Oven, Inc., 2019 USPQ2d 443903, at *12 (TTAB 2019) (holding the use of identical marks for bread buns and retail bakery stores and shops 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);TMEP §1207.01(a)(ii).
Therefore, the respective goods and services are closely related because they travel through similar trade channels to the same class of consumer. See attached registrations where companies who sell these items via retail store services also sell them on the actual goods.
Thus, upon encountering the marks in association with the goods/services, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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, 1025 (Fed. Cir. 1988).
In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.
IDENTIFICATION OF SERVICES
The applicant did not address the issue of the identification of services. The requirements are made final.
The identification of goods is indefinite and must be clarified because the applicant has added language that is not acceptable and not included in the identification of goods/services manual. The identification of services must be clarified as explained below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
CLASS 35
Terms like “including” are overly broad and could include items not listed. It is unclear what the ticket services entail. Selling tickets to one’s own events is not a separate service for trademark purposes. If the applicant is providing ticket agency services these services are in Class 41. Also, the identification of services cannot include the actual mark.
Applicant may adopt the following identification, if accurate:
“On-line retail store services featuring tools used by professional hairdressers, colorists, and barbers, namely, scissors, combs, brushes, and hair foils.” International Class 35.
“Ticket agency services for entertainment events.” International Class 41.
CLASS 41
The wording “Providing on-line training in the form of video demonstrations in the field of hairdressing and barbering” is acceptable in Class 41.
CLASS 42
The applicant should indicate the subject matter of the services.
Applicant may adopt the following identification, if accurate:
“Computer services, namely, creating an on-line community for registered users to share photographic examples of their work, discuss career-related topics, receive industry related news, comment on the work of others, and make connections with like-minded professionals in the field of hairdressing and barbering.” International Class 42.
Applicant’s goods and/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or 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.
RESPONSE OPTIONS
If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/rebecca smith/
Rebecca A. Smith
Trademark Attorney
Law Office 110
(571) 272-9223
rebecca.smith6@uspto.gov
RESPONSE GUIDANCE