To: | Paradigm Marketing Alliance, Inc. (cgoetschel@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88916198 - LOCKER ROOM - N/A |
Sent: | August 20, 2020 07:55:42 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 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88916198
Mark: LOCKER ROOM
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Correspondence Address: PARADIGM MARKETING ALLIANCE, INC. PARADIGM MARKETING ALLIANCE, INC.
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Applicant: Paradigm Marketing Alliance, Inc.
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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: August 20, 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
Applicant seeks to register the mark “LOCKER ROOM” for “Self-help materials, videos, podcast, mobile app, conferences all specifically regarding the empowerment of men” in International Class 041.
The registrants’ marks are as follows:
Mark |
Registration No. |
Relevant Goods/Services |
LOCKER ROOM EFFECT |
5536267 |
“Providing programs, training, workshops, seminars, and coaching to employees, athletes, and students for educational purposes related to professional development, team building, leadership, diversity, interpersonal skills, strategic thinking, and organizational effectiveness in occupational, sporting, and educational settings” in International Class 041. |
LOCKER ROOM EFFECT WHERE CHANGE HAPPENS |
5536267 |
“Providing programs, training, workshops, seminars, and coaching to employees, athletes, and students for educational purposes related to professional development, team building, leadership, diversity, interpersonal skills, strategic thinking, and organizational effectiveness in occupational, sporting, and educational settings” in International Class 041. |
THE DAILY LOCKER ROOM |
5249527 |
“Personal growth and motivation consulting services; Providing a web site featuring information in the fields of personal relationships, personal growth and motivation, and self-fulfillment” in International Class 045. |
MEN’S LOCKER ROOM |
5118390 |
“Education services, namely, providing classes, study groups, seminars, workshops in the fields of bible studies and family values” in International Class 041. |
The bolded marks listed above are owned by the same registrant.
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the applicant’s mark LOCKER ROOM creates a similar overall commercial impression to the cited registered mark the entirety of the applied-for mark is incorporated within the registered marks, LOCKER ROOM EFFECT, LOCKER ROOM EFFECT WHERE CHANGE HAPPENS, THE DAILY LOCKER ROOM, and MENS’S LOCKER ROOM. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Moreover, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). The wording LOCKER ROOM in applicant’s mark and LOCKER ROOM in the registrations create a similar overall commercial impression.
Lastly, the applied-for mark does not have any additional matter that would serve to differentiate it from the registered marks.
As such, the marks are confusingly similar, and likely to cause confusion when used in connection with similar goods.
Relatedness of the Relevant Goods and Services
The subject matter of applicant’s services “empowerment of men” is broad enough to encompass the more narrow subject matter of the registrants’ educational services.
Conclusion
In total, the two marks create a similar commercial impression and the applicant’s broad identification of services would encompass the more narrow services identified by the registrant. Therefore, consumers are likely to be confused and mistakenly believe that the goods and services originate from a common source. Therefore, registration must be refused under Section 2(d) of the Act.
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
Applicant identified the following goods and services:
Class 041: Self help materials, videos, podcast, mobile app, conferences all specifically regarding the empowerment of men
Applicant may substitute the following wording, if accurate:
Bolded wording has been added to the identification of goods to indicate suggested amendments.
Class 009: Downloadable educational self-help course materials in the field of empowerment of men; Downloadable podcasts in the field of empowerment of men; Downloadable video recordings featuring empowerment of men; downloadable mobile applications for providing information and content in the field of empowerment of men
Class 016: Printed self-help educational materials in the field of empowerment of men
Class 035: Arranging and conducting business conferences in the field of empowering men in business
Class 041: Arranging and conducting educational conferences in the field of empowerment of men; Entertainment services, namely, providing podcasts in the field of empowering men; Providing on-line videos featuring empowerment of men, not downloadable
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 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
RECOMMENDATION TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Applicant may 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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Andrew T. Clark/
Trademark Examining Attorney
Law Office 107
600 Dulany Ave.
Alexandria, VA 22316
(571) 270-7304
andrew.clark@uspto.gov
RESPONSE GUIDANCE