United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88947354
Mark: FLOW
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Correspondence Address:
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Applicant: Alqur Studios 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: September 08, 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.
PRIOR PENDING APPLICATIONS
The filing dates of pending U.S. Application Serial No. 86605728 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 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 application.
The effective filing date of pending U.S. Application Serial No. 88637297 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 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2697775, 5124030, 2940390, 4816737, 5583335, and 5797415. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is FLOW for “Promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations.”
Registrants’ marks are:
1) FLOW (Registration No. 2697775) for “Automobile dealership services; and providing information about automobiles for sale by means of the Internet”;
2) FLOW (Registration No. 5124030) for “Automobile dealership services; and providing information about automobiles for sale by means of the Internet”;
3) CASHFLOW (Registration No. 2940390) for “Providing computer games for financial education that may be accessed network-wide by either internet or intranet network users”;
4) FLOW FREE (Registration No. 4816737) for, in part, “Providing on-line computer games, on-line video games, on-line computer-based electronic games, on-line computer games accessible via digital networks and mobile phone applications, and on-line computer games featuring logic and puzzles; providing an Internet website portal featuring links to on-line computer games, on-line video games, on-line computer-based electronic games, on-line computer games accessible via digital networks and mobile phone applications, and on-line computer games featuring logic and puzzles”;
5) FLOWPLAY (Registration No. 5583335) for, in part, “Entertainment services, namely, providing on-line computer games; leisure services, namely, entertainment in the nature of providing multi-user computer games via local computer networks, global computer networks and the Internet; electronic games services, namely, providing on-line computer games and providing multi-user computer games via local computer networks, global computer networks and the Internet”;
6) CONTENTFLOW (with design) (Registration No. 5797415) for, in part, “Software design and development; Rental of computer software; Providing temporary use of non-downloadable software applications accessible via a web site for streaming of audio and video material and video and audio editing; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Providing temporary use of web-based software for streaming of audio and video material and video and audio editing; Electronic data storage and data back-up services; Electronic storage of digital audio files; Electronic storage of digital images; Electronic storage of digital video files Hosting of digital content on the Internet; Online data storage; Software as a service for streaming of audio and video material and video editing.”
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.
Comparison 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).
1) Comparison with Registration No. 2697775 and 5124030
In the present case, applicant’s mark is FLOW and registrant’s marks are FLOW (Registration No. 2697775) and FLOW (with design) (Registration No. 5124030). Concerning Registration No. 2697775, applicant’s and registrant’s 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.
Concerning Registration No. 5124030, the design in registrant’s mark does not obviate a likelihood of confusion refusal. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Therefore, the marks are confusingly similar.
2) Comparison with Registration No. 2940390, 4816737, 5583335, and 5797415
In the present case, applicant’s mark is FLOW and registrants’ marks are CASHFLOW, FLOW FREE, FLOWPLAY, and CONTENTFLOW (with design). 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)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it shares the wording FLOW in the registered marks and does not add any wording that would distinguish it from that mark.
In registrant’s marks, the word CASH, FREE, PLAY, and CONTENT are less significant because the words are descriptive for registrant’s goods and/or services. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that each of the words in the registered marks is merely descriptive of or generic for registrant’s goods and/or services. Specifically:
Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording FLOW the more dominant element of the marks.
Finally, the design in Registration Nos. 5797415 does not obviate a likelihood of confusion refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the marks are confusingly similar.
Comparison of the Goods and/or Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
1) Comparison with Registration No. 2697775 and 5124030
Applicant’s goods and/or services are, in part, “Promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations.”
Registrant’s goods and/or services are “Automobile dealership services; and providing information about automobiles for sale by means of the Internet.”
The attached Internet evidence, consisting of Outdoor Billboard, Sellics, and Carmax, establishes that the same entity commonly provides promotion, advertising, and marketing services, as well as information about the goods and/or services of others for sale, under the same mark. Thus, applicant’s and registrant’s goods and/or 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).
2) Comparison with Registration No. 2940390, 4816737, and 5583335
Applicant’s goods and/or services are, in part, “Entertainment services, namely, providing an on-line computer game.”
Registrants’ goods and/or services are “Providing computer games for financial education that may be accessed network-wide by either internet or intranet network users” (Registration No. 2940390), “Providing on-line computer games, on-line video games, on-line computer-based electronic games, on-line computer games accessible via digital networks and mobile phone applications, and on-line computer games featuring logic and puzzles; providing an Internet website portal featuring links to on-line computer games, on-line video games, on-line computer-based electronic games, on-line computer games accessible via digital networks and mobile phone applications, and on-line computer games featuring logic and puzzles” (Registration No. 4816737), and “Entertainment services, namely, providing on-line computer games; leisure services, namely, entertainment in the nature of providing multi-user computer games via local computer networks, global computer networks and the Internet; electronic games services, namely, providing on-line computer games and providing multi-user computer games via local computer networks, global computer networks and the Internet” (Registration No. 5583335).
In this case, the application use(s) broad wording to describe “Entertainment services, namely, providing an on-line computer game,” which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “Providing computer games for financial education that may be accessed network-wide by either internet or intranet network users” (Registration No. 2940390). 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 goods and/or 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 goods and/or services are related.
In this case, regarding applicant’s “Entertainment services, namely, providing an on-line computer game” and registrants’ “Providing on-line computer games” (Registration No. 4816737) and “Entertainment services, namely, providing on-line computer games” (Registration No. 5583335), the goods and/or services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
3) Comparison with Registration No. 5797415
Applicant’s goods and/or services are, in part, “Electronic data storage.”
Registrant’s goods and/or services are “Software design and development; Rental of computer software; Providing temporary use of non-downloadable software applications accessible via a web site for streaming of audio and video material and video and audio editing; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Providing temporary use of web-based software for streaming of audio and video material and video and audio editing; Electronic data storage and data back-up services; Electronic storage of digital audio files; Electronic storage of digital images; Electronic storage of digital video files Hosting of digital content on the Internet; Online data storage; Software as a service for streaming of audio and video material and video editing” (Registration No. 5797415).
In this case, the application use(s) broad wording to describe “electronic data storage,” which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “Electronic storage of digital audio files; Electronic storage of digital images; Electronic storage of digital video files . . . Online data storage.”
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 goods and/or 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 goods and/or services are related.
Furthermore, concerning “electronic data storage,” the goods and/or services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
Conclusion
Because the marks are similar and applicant’s and registrant’s respective goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Therefore, applicant’s mark is refused registration for Class(es) 35, 41, and 42 under Trademark Act Section 2(d).
RESPONSE GUIDELINES
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.
Edward Payabyab
/Edward Payabyab/
Trademark Examining Attorney
Law Office 128
(571) 272-0021
edward.payabyab@uspto.gov
RESPONSE GUIDANCE
