To: | THE HYPE HOUSE LLC (kfeinswog@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88811717 - THE HYPE HOUSE - N/A |
Sent: | May 18, 2020 05:23:44 PM |
Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88811717
Mark: THE HYPE HOUSE
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Correspondence Address: |
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Applicant: THE HYPE HOUSE LLC
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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 18, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
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.
Applicant has applied to register the mark THE HYPE HOUSE for use in connection with the following relevant goods and services:
Clothing and apparel, namely, shirts, blouses, T-shirts, pants, shorts, shortalls, creepers, sweatshirts, sweatpants, jogging suits, jackets, coats, skirts, dresses, jumpsuits, jumpers, tops, sweaters, vests, mittens, gloves, raincoats, underwear, night gowns, leg warmers, pajamas, robes, boxer shorts, undershirts, sports bras; lingerie, camisoles, neckties, swim wear, bathing suits, beach wear, beach cover ups; scarves, bandanas, headbands, hats, caps, suspenders, belts; tights, leotards, socks, leggings, booties and footwear; and
Live musical performances and events.
Registration No. 2182846 is for the mark HYPE (stylized) for use in connection with the following goods:
women's dress and casual and athletic shoes and boots and women's and children's slippers, men's, women's and children's belts and sleepwear, namely, nightgowns, pajamas and bathrobes, foundation garmets, in the nature of panties, and slips
Registration No. 3369139 is for the mark HYPE for use in connection with the following goods:
Scarves, hats, jackets, coats; women's clothing, namely, shirts, blouses, sweaters, cardigans, dresses, skirts, pants; Sleepwear, namely, nightgowns, pajamas and bathrobes; foundation garments in the nature of panties and slips; children's slippers; women's dress, casual and athletic shoes, boots and slippers.
The ‘846 and ‘139 registrations are owned by the same registrant.
Registration No. 5399433 is for the mark HYPE HOUSE and Registration No. 5399434 is for the mark H HYPE HOUSE and design. Both are registered for use in connection with, inter alia, “entertainment demonstrations and classes in the field of yoga, and music concerts and festivals.” Both registrations are owned by the same registrant.
Similarity 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).
With regard to the ‘433 and ‘434 registrations, applicant’s mark is THE HYPE HOUSE and registrant’s mark is HYPE HOUSE. Aside from the addition of “THE”, the 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/or services. Id.
With regard to the ‘846 and ‘139 registrations, applicant’s mark is THE HYPE HOUSE and registrant’s mark is HYPE. Applicant merely adds “HOUSE” to the registered mark. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. Also, as stated supra, the inclusion of the term “the” at the beginning of the applied-for mark does not affect or otherwise diminish the overall similarity between the marks.
The marks in the ‘846 and ‘434 registrations are displayed in a stylized manner, while the applied-for mark appears in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Based upon the foregoing, the marks of applicant and registrants are confusingly similar.
Relatedness of the Goods and Services
With regard to the ‘433 and ‘434 registration, the application uses broad wording to describe “Live musical performances and events,” which presumably encompasses all services of the type described, including registrants’ more narrow “music concerts and festivals.” 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). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
With regard to the ‘846 and ‘139 registrations, applicant’s listed clothing items encompass or are otherwise closely related to registrant’s listed women’s clothing items. Thus, applicant’s and registrant’s services are legally identical. Also, neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
Based upon the foregoing, the goods of applicant and those in the ‘846 and ‘139 registrations are closely related.
Because the marks of applicant and registrant are confusingly similar and the respective goods and services are closely related, a likelihood of confusion exists in the present case. Registration therefore is refused under Section 2(d) of the Trademark Act. 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, 1026 (Fed. Cir. 1988).
PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 88748806, 88751375, 88751379, 88755217 and 88772394 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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 applications.
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 marks in the referenced applications. 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.
IDENTIFICATION OF GOODS AND SERVICES
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The wording “a series of DVDs featuring motion pictures and television programs,” “optical discs featuring motion pictures and television programs” and “Downloadable motion pictures and a series of downloadable television programs” in the identification of goods for International Class 9 is indefinite and must be amended to indicate the subject matter of the motion pictures and television programs.
The wording “a series of books” in the identification of goods for International Class 16 is indefinite and must be amended to indicate the subject matter of the books.
The wording “toys; games” in the identification of goods for International Class 28 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial name of the goods.
The wording “sporting goods” in the identification of goods for International Class 28 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial name of the goods.
The wording “A series of television programs, motion pictures and other entertainment programs” in the identification of services for International Class 41 is indefinite and overbroad and must be amended. Motion picture films and downloadable television programs are classified in International Class 9. Applicant must amend this wording to clarify the nature of the services and reclassify them, if appropriate.
The wording “Entertainment services, namely, providing a series of radio programs in the fields of news, comedy, variety, drama, action/adventure, sports and musical on the radio or via a global computer network” is indefinite and requires clarification. Applicant may amend this wording to “Entertainment services, namely, providing an ongoing series of radio programs in the fields of news, comedy, variety, drama, action/adventure, sports and musical on the radio or via a global computer network,” if accurate.
The wording “Production and distribution of motion pictures, television programs and other entertainment programs” is indefinite and requires clarification. Applicant must amend this wording to clarify the nature of the “other entertainment programs,” e.g., multimedia entertainment content.
The wording “Live musical performances and events” is indefinite and requires clarification. Applicant must amend this wording to clarify the nature of the services. Suggested amended wording appears below.
Applicant may adopt the following identification, if accurate (suggested changes in bold):
International Class 3
Cosmetics, fragrances, makeup, hair shampoo; hair conditioner; hair mousse; hair cream rinse, skin cleansing cream; facial, hand, and body cream, hair lotion, body lotion, and skin lotion and skin moisturizer; scalp conditioner; bubble bath; bath oil; bath powder, nail polish; nail hardener; facial scrub; facial mask; talcum powder; perfume; cologne; aftershave lotion; shaving cream and shaving foam; deodorant soap and skin soap; non-medicated liquid soap for hands, face, and body; eye shadow, blush, facial concealer, foundation, rouge, face powder, mascara, lip liner, eyeliner; facial cosmetics, namely, cover sticks; make-up primer, eyebrow powder, eyebrow pencils, lip gloss, lip balm and lipstick
International Class 5
Medicated liquid soap for hands, face, and body
International Class 9
Eyeglasses; sunglasses; computer games, namely, recorded computer game cartridges, discs, tapes and programs; recorded computer game software, programs and discs; a series of DVDs featuring motion pictures and television programs about {indicate subject matter or field of pictures and programs}; optical discs featuring motion pictures and television programs about {indicate subject matter or field of pictures and programs}; {specify downloadable or recorded} game software; recorded video game software, programs, discs and cartridges; {specify downloadable or recorded} electronic game software and programs; Downloadable motion pictures and a series of downloadable television programs about {indicate subject matter or field of pictures and programs}; cell phone covers; {specify downloadable or recorded} computer and wireless applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc., and, if software is content- or field-specific, the content or field of use}; Ongoing series of motion picture films about {indicate subject matter}; Downloadable ongoing series of motion pictures about {indicate subject matter}
International Class 14
<no changes>
International Class 16
A series of books in the field of {indicate subject matter or field}; series of fiction books; Desktop business card holders
International Class 18
Purses, luggage, carrying cases, traveling bags, wallets, briefcases, valises, umbrellas, parasols, garment bags for traveling, trunks being luggage, gym bags, backpacks, tote bags; cosmetic or toiletry bags sold empty; document cases, duffel bags, handbags, luggage tags, clutches, reusable shopping bag, shoulder bags, business card holders in the nature of card cases; credit card holders
International Class 25
<no changes>
International Class 28
Toys, namely, {provide common commercial name of the goods, e.g., toy cars, water toys}; games, namely, {provide common commercial name of the goods, e.g., arcade racing game machines, checkers games}; dolls, plush toys, stuffed toys, and action figures and accessories therefor; games, namely, board games, arcade games and tabletop games; playthings, namely, beanbags in the form of playthings; video game consoles and machines; electronic games, namely, arcade-type electronic video games; sporting goods, namely, {provide common commercial name of the goods, e.g., tennis rackets, hockey sticks}; sports balls
International Class 41
Entertainment services, namely, the provision of continuing television programs and motion pictures featuring {indicate type e.g., news, comedy, commentary, etc.} delivered by {indicate form of broadcast medium, e.g., television, radio, satellite, the internet, etc.}; entertainment services, namely, providing an on-line board games and providing online non-downloadable game software; Entertainment in the nature of an ongoing series of television programs in the fields of news, comedy, variety, drama, action/adventure, sports and musical; Entertainment services, namely, providing an ongoing series of radio programs in the fields of news, comedy, variety, drama, action/adventure, sports and musical on the radio or via a global computer network; Entertainment media production services for a series of motion pictures, television programs and Internet programs; providing on-line computer games; Production and distribution of motion pictures, television programs and other entertainment programs in the nature of multimedia entertainment content; Entertainment services in the nature of presenting live musical performances; Entertainment events, namely, {specify nature of event, e.g., live music concerts}; Entertainment in the nature of provision of an ongoing series of motion pictures via a video-on-demand service
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
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least nine classes; however, applicant submitted fees sufficient for only eight classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
DISCLAIMER REQUIRED
The attached definition from the Lexico Dictionary defines “house” as “A business or institution.” See the attached definition 2.1. Thus, the wording merely describes applicant’s goods and/or services because it is descriptive of the fact that applicant is a business.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HOUSE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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.
/William D Jackson/
Attorney Advisor - Trademarks
U.S. Patent and Trademark Office
Law Office 117
(571) 272-3064
William.Jackson@uspto.gov
RESPONSE GUIDANCE