To: | Bullish LLC (brian@bullish.news) |
Subject: | U.S. Trademark Application Serial No. 88816076 - BULLISH - N/A |
Sent: | December 02, 2020 12:29:07 PM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88816076
Mark: BULLISH
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Correspondence Address: |
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Applicant: Bullish 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: December 02, 2020
On June 2, 2020, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 88574507, 88676659, and 88676665. Although two of the three marks have matured into registrations, none are still regarded as a bar to registration. The previous refusal of registration is maintained and continued as follows.
Likelihood of Confusion with Registered Mark
The registered mark BULL(ISH) is used in connection with an ongoing online video series in the field of technology and the technology industry; and providing a website featuring non-downloadable videos in the fields of technology and the technology industry. The applied-for mark BULLISH is used with blogs featuring advice and education in the fields of personal finance and investing.
The marks are the same except for applicant’s omission of the parentheses found in the cited mark. 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)). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains the same word as in the registered mark and does not add anything that would distinguish it from that mark.
Determining likelihood of confusion is based on the description of the 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, applicant uses broad wording to describe the subject matter of its videos as ‘technology and the technology industry’, which presumably encompasses applicant’s services, as the technology industry is a big part of the stock markets which are the primary investment vehicle in the United States. For example, the attached article describes the five large technology companies which comprise 15% of the S&P 500. Thus, the subject matters of applicant’s and registrant’s services are sufficiently related such that consumers would assume a relationship between the parties’ services.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Michael Engel/
Trademark Examining Attorney
Law Office 107
Michael.Engel@uspto.gov
(571) 272-9338
RESPONSE GUIDANCE