Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  December 11, 2020

 

 

This Office action is in response to applicant’s communication filed on November 18, 2020.  The refusal to register based upon a likelihood of confusion with U.S. Registration Nos. 2182846 and 3369139 is withdrawn.  Applicant’s disclaimer is acceptable.  The prior-filed applications have all abandoned and no longer present potential bars to registration.  With regard to U.S. Registration Nos. 5399433 and 5399434, applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.  For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 5399433 and 5399434.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  In addition, the following requirement is now made FINAL:  amendment of identification of goods and services.  See 37 C.F.R. §2.63(b).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5399433 and 5399434.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.  This refusal is continued and made FINAL.

 

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/or 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/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 services: “Entertainment events, namely, live musical concerts and other events.”  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

 

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 THE HYPE HOUSE and registrant’s mark is HYPE HOUSE.  Aside from the addition of “THE”, 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/or services.  Id.

 

With regard to the addition of “THE”, when comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).

 

The mark in the ‘434 registration is displayed in a stylized manner with a design element, 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”).

 

Therefore, the marks are confusingly similar.  Applicant does not dispute this conclusion.

 

Relatedness of the Services

 

The compared goods and/or 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).

 

Determining likelihood of confusion is based on the description of the goods and/or 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)).  

 

In this case, the application use broad wording to describe “Live musical performances and other events”, which presumably encompasses all services of the type described, including registrant’s more narrow “entertainment demonstrations and classes in the field of yoga, and 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.

 

Applicant asserts that “[w]ith the exception of live events, Applicant’s services are significantly difficult [sic, different] from the services in the Hype House registrations.”  Applicant apparently concedes that its “Live musical performances and events” are similar to those of registrant.

 

Because the marks of applicant and registrant are confusingly similar and the respective 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 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).

 

The refusal to register under Section 2(d) of the Trademark Act is continued and made FINAL.

 

IDENTIFICATION OF GOODS AND SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

International Class 9

 

The identification for “downloadable and recorded computer and wireless applications” in International Class 9 is indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  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).

 

Applicant may adopt the following wording in International Class 9, if accurate:  “downloadable and 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}”.

 

International Class 16

 

The wording “A series of fiction and non-fiction books” in the identification of goods for International Class 16 is indefinite and must be amended to indicate the subject matter of the non-fiction books.  Applicant may adopt the following wording format, if accurate: “Series of fiction books; Series of non-fiction books in the field of {indicate topic or field}”.

 

International Class 18

 

The wording “business card holder” in the identification of goods for International Class 18 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 “Desktop business card holders” in International Class 16 and “business card holders in the nature of card cases” in International Class 18.  Applicant must amend this wording to clarify the nature of the goods and reclassify them, if appropriate.

 

International Class 28

 

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.  Applicant may adopt the following wording format, if accurate: “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}”.

 

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.  Applicant may adopt the following wording format, if accurate: “sporting goods, namely, {provide common commercial name of the goods, e.g., baseball bats, hockey sticks}”.

 

International Class 41

 

The wording “Entertainment in the nature of an ongoing series of television programs and motion pictures in the fields of news, comedy, variety, drama, reality, action/adventure, sports and musical” 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.  Applicant may adopt the following wording format, if accurate: “Entertainment services, namely, the provision of continuing television programs and motion pictures in the fields of news, comedy, variety, drama, reality, action/adventure, sports and musical delivered by {indicate form of broadcast medium, e.g., television, radio, satellite, the internet, etc.}”.

 

The wording “Entertainment events, namely, live musical concerts and other events” is indefinite and requires clarification.  Applicant must amend this wording to clarify the nature of the services.  Applicant may adopt the following wording format, if accurate: “Entertainment events, namely, live musical concerts and {specify nature of event, e.g., dance events}”.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

The requirement for an amended identification of goods and services is continued and made FINAL.

 

PARTIAL ABANDONMENT – ADVISORY

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods and services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

 

International Class 9

 

downloadable and recorded computer and wireless applications

 

International Class 16

 

A series of fiction and non-fiction books

 

International Class 18

 

business card holders

 

International Class 28

 

Toys, games; sporting goods

 

International Class 41 

 

Entertainment in the nature of an ongoing series of television programs and motion pictures in the fields of news, comedy, variety, drama, reality, action/adventure, sports and musical; Entertainment events, namely, live musical concerts and other events

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and services only: 

 

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 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 in in the fields of news, comedy, variety, reality, drama, action/adventure, sports and music; optical discs featuring motion pictures and television programs in the fields of news, comedy, variety, reality, drama, action/adventure, sports and music; downloadable and recorded game software; recorded video game software, programs, discs and cartridges; downloadable and recorded electronic game software and programs; Downloadable motion pictures and a series of downloadable television programs in the fields of news, comedy, variety, reality, drama, action/adventure, sports and music; cell phone covers; Ongoing series of motion picture films in the fields of news, comedy, variety, reality, drama, action/adventure, sports and music; Downloadable ongoing series of motion pictures and television programs in the fields of news, comedy, variety, reality, drama, action/adventure, sports and music

 

International Class 14

 

Watches, clocks and jewelry

 

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, and credit card holders

 

International Class 25

 

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

 

International Class 28

 

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; tennis rackets, sports balls

 

International Class 41 

 

Entertainment services, namely, providing a series of ongoing radio programs in the fields of news, comedy, variety, reality, 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. Entertainment in the nature of an ongoing series of motion pictures; entertainment services, namely, providing an on-line board games and providing online non-downloadable game software; 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 in the nature of provision of an ongoing series of motion pictures, television programs and other entertainment content via a video-on-demand service

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

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).

 

 

/William D Jackson/

Attorney Advisor - Trademarks

U.S. Patent and Trademark Office

Law Office 117

(571) 272-3064

William.Jackson@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 December 11, 2020 for

U.S. Trademark Application Serial No. 88811717

 

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. 

 

 

/William D Jackson/

Attorney Advisor - Trademarks

U.S. Patent and Trademark Office

Law Office 117

(571) 272-3064

William.Jackson@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 December 11, 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.”