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 issue(s) below. 15 U.S.C. §1062(b); 37
C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
- Refusal to register – likelihood of confusion
- Prior-filed application
- Amendment of identification of services
- Disclaimer required
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASS 41 ONLY
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 attached registrations.
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 “Entertainment services in the nature of series of programs broadcast on the
Internet.” 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.
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”).
Applicant’s mark appears in standard characters, while the ‘434 registration appears in a stylized font with a design element. 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.
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).
Where the marks of the respective parties are identical or virtually identical, as in this case, the
degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See
In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)),
aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Applicant’s services are “Entertainment services in the nature of series of programs broadcast on the Internet.” Registrant’s relevant services
are “music concerts and festivals.”
The attached Internet evidence, consisting of printouts of third parties that offer both programs
broadcast over the Internet and music concerts, establishes that the same entity commonly provides the relevant services and markets the services under the same mark. These third parties include Imagine Dragons, Green Day, 21 Pilots, Cage the Elephant, the Black Keys and Portugal the Man. Thus, applicant’s
and registrant’s 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). This is especially
so in light of the fact that the marks of applicant and registrant are virtually identical.
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).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 88751379 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.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth
below.
IDENTIFICATION OF SERVICES
The identification of services for International Class 38 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate: “Broadcasting of reality programming over the Internet via an Internet channel.”
The identification of services for International Class 41 is indefinite and must be clarified because it does not specify the subject matter of the programs. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Entertainment services, namely, the provision of continuing programs featuring {indicate type e.g., news, comedy, commentary, etc.} delivered by the internet
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.
DISCLAIMER REQUIRED
Applicant must disclaim the wording “HOUSE” because it is merely descriptive of a characteristic of
applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d
1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Terms that describe the provider of a product or service may also be merely
descriptive of the product and/or service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir.
2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory
data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE
merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
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 services because they are provided by 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.
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(s) and/or
requirement(s) 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.
/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.