To: | Altitude HQ Ltd (ljp@pinonicholsonlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88300334 - ALTITUDE POLE & FITNESS - N/A |
Sent: | 4/29/2019 1:57:06 PM |
Sent As: | ECOM126@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88300334
MARK: ALTITUDE POLE & FITNESS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Altitude HQ Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/29/2019
· Section 2(d) Refusal – Likelihood of Confusion
· Amend Identification of Services
· Multiple-Class Application Requirements
· Disclaimer Required
· Advisory – Prior-Filed Applications
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is ALTITUDE POLE & FITNESS for “Retail services in the field of exercise equipment and fitness equipment, including aerial arts equipment; franchising services” in class 35 and “Recreation, training, sporting and educational services; provision of group and individual exercise instruction; physical fitness and exercise instruction, including aerial arts, pole fitness, and yoga instruction; gymnastic and dance instruction; provision of fitness, exercise and dance facilities, conducting exercise classes; provision of apparatus for exercise and fitness; party and event planning services; organization of entertainment and fitness events; advisory and consultancy regarding the aforesaid, including via a website; none of the aforesaid being related to endurance training at high altitudes” in class 41. The registered marks are as follows:
Registration No. |
Mark |
Identification of Services |
4861583 |
ALTITUDE – THE HEIGHT OF FITNESS |
Class 41: Conducting fitness classes; conducting fitness classes and aerobics classes; conducting fitness and exercise clinics; health clubs services, namely, providing instruction and equipment in the field of physical exercise and health and fitness training; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; personal trainer services; physical fitness instruction; physical fitness training services |
4906380 |
HIGH ALTITUDE PERSONAL TRAINING |
Class 41: Personal trainer services; Personal training provided in connection with weight loss and exercise programs; Personal training services, namely, strength and conditioning training; Providing facilities for fitness and exercise training |
3990396 |
ALTITUDE |
Class 41: Providing recreational services in the nature of pools, providing swimming pools, providing swimming pools at a hotel |
5617489 |
ALTITUDE |
Class 41: Educational services, namely, arranging and conducting conferences, exhibitions, and special events for social entertainment purposes all in the field of travel and travel expense |
5279119 |
ALTITUDE |
Class 41: educational services, namely, conducting seminars, conferences, workshops, demonstrations in the field of cloud application software for financial management, education and government, technology, human capital management, cloud-based software, human resources, recruiting, analytics, learning management and learning tools; professional training services, namely, training in the field of cloud application software for financial management, education and government, technology, human capital management, cloud-based software, human resources, recruiting, analytics, learning management and learning tools |
3122598 |
HIGH ALTITUDE |
Class 35: Retail store services featuring bikes, bike accessories, camping equipment, outdoor clothing, imported goods, namely, women’s clothing and accessories |
5024519 |
CHANGING ALTITUDE |
Class 35: Advertising; marketing; business management; business administration; office functions |
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 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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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 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 [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)); TMEP §1207.01(b).
In this case, the marks are similar because they all feature the word ALTITUDE.
Furthermore, 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). Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In the present case, the attached evidence shows that the wording POLE & FITNESS in the applied-for mark is merely descriptive of or generic for applicant’s services. Thus, applicant is required to disclaim this wording (see Disclaimer section, below) and this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording ALTITUDE the more dominant element of the mark. The marks in Registration Nos. 4861583 (ALTITUDE – THE HEIGHT OF FITNESS), 4906380 (HIGH ALTITUDE PERSONAL TRAINING), 3122598 (HIGH ALTITUDE), and 5024519 (CHANGING ALTITUDE), all also contain the word ALTITUDE.
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). Here, the marks share the term ALTITUDE, and therefore create a similar commercial impression.
Comparison of the Services
The 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). The determination of the 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, the application use broad wording to describe its services, which therefore presumably encompasses all services of the type described, including the more narrow identifications listed in the registrations. 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 registrants’ 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)). Therefore, the applicant’s and registrants’ overlapping services are related, as demonstrated in the following table:
Broad Identification in Application |
Corresponding Narrower Identifications in Registrations |
Class 35: Retail services in the field of exercise equipment and fitness equipment, including aerial arts equipment |
Class 35: Retail store services featuring bikes [and] bike accessories… (Reg. No. 3122598) |
Class 35: Franchising services |
Class 35: Advertising; marketing; business management; business administration; office functions (Reg. No. 5024519) |
Class 41: Recreation, training, sporting and educational services; … party and event planning services; organization of entertainment and fitness events |
Class 41: Educational services, namely, conducting seminars, conferences, workshops, demonstrations in the field of cloud application software for financial management, education and government, technology, human capital management, cloud-based software, human resources, recruiting, analytics, learning management and learning tools; professional training services, namely, training in the field of cloud application software for financial management, education and government, technology, human capital management, cloud-based software, human resources, recruiting, analytics, learning management and learning tools (Reg. No. 5279119)
Class 41: Educational services, namely, arranging and conducting conferences, exhibitions, and special events for social entertainment purposes all in the field of travel and travel expense (Reg. No. 5617489) |
Class 41: Recreation, training, sporting and educational services; provision of group and individual exercise instruction; physical fitness and exercise instruction, including aerial arts, pole fitness, and yoga instruction; gymnastic and dance instruction; … conducting exercise classes |
Class 41: Conducting fitness classes; conducting fitness classes and aerobics classes; conducting fitness and exercise clinics; health clubs services, namely, providing instruction and equipment in the field of physical exercise and health and fitness training; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities; personal trainer services; physical fitness instruction; physical fitness training services (Reg. No. 4861583)
Class 41: Personal trainer services; Personal training provided in connection with weight loss and exercise programs; Personal training services, namely, strength and conditioning training (Reg. No. 4906380) |
Class 41: provision of fitness, exercise and dance facilities; … provision of apparatus for exercise and fitness |
Class 41: Providing recreational services in the nature of pools, providing swimming pools, providing swimming pools at a hotel (Reg. No. 3990396)
Class 41: Health clubs services, namely, providing instruction and equipment in the field of physical exercise and health and fitness training; physical fitness studio services, namely, providing group exercise instruction, equipment, and facilities (Reg. No. 4861583)
Class 41: Providing facilities for fitness and exercise training (Reg. No. 4906380) |
Therefore, upon encountering the relevant marks used in connection with the relevant services, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source. Consequently, registration is refused under Section 2(d).
The identification of services currently reads:
Class 35: Retail services in the field of exercise equipment and fitness equipment, including aerial arts equipment; franchising services
Class 41: Recreation, training, sporting and educational services; provision of group and individual exercise instruction; physical fitness and exercise instruction, including aerial arts, pole fitness, and yoga instruction; gymnastic and dance instruction; provision of fitness, exercise and dance facilities; conducting exercise classes; provision of apparatus for exercise and fitness; party and event planning services; organization of entertainment and fitness events; advisory and consultancy regarding the aforesaid, including via a website; none of the aforesaid being related to endurance training at high altitudes.
Applicant may adopt the following identification, if accurate (changes in bold, instructions in italics):
Class 35: Retail services in the field of exercise equipment and fitness equipment, namely, aerial arts equipment; franchising services, namely, offering business management assistance in the establishment and operation of fitness studios; franchising services, namely, consultation and assistance in business management, organization and promotion; special event planning services for business purposes
Class 36: Franchising services, namely, providing financial information and advice regarding the establishment and/or operation of fitness studios
Class 41: Recreation, training, sporting and educational services, namely, {specify particular services, e.g., personal fitness training services}; provision of group and individual exercise instruction; physical fitness and exercise instruction, namely, aerial arts, pole fitness, and yoga instruction; gymnastic and dance instruction; provision of fitness, exercise and dance facilities; conducting exercise classes; provision of apparatus for exercise and fitness; party and special event planning services for social entertainment purposes; organization of entertainment and fitness events; advisory and consultancy regarding the aforesaid, namely, providing information on the aforesaid via a website; none of the aforesaid being related to endurance training at high altitudes.
Class 42: Franchising services, namely, planning and design of information technology systems for business franchises
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 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 fees already paid (view the USPTO’s current fee schedule). The application potentially includes services that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 2 classes. 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See 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.
Fees
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
In this case, applicant must disclaim the wording “POLE & FITNESS” because it is not inherently distinctive. This wording at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use 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).
The identification of services and the attached pages from applicant’s website demonstrate that the applicant offers a variety of fitness classes, including pole fitness classes. Thus, the wording merely describes the subject matter of applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “POLE & FITNESS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Advisory – Prior-Filed Applications
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.
Advisory – Supplemental Search May Raise Additional Cites
As discussed in more detail in the Identification section, above, the open ended wording of applicant’s identification results in an identification that potentially encompasses a wide variety of services. Accordingly, the examining attorney may conduct a supplemental search after applicant amends the identification and limits its services to a defined scope. Depending on the scope of the amended identification and the results of the supplemental search, new cites for a likelihood of confusion refusal may be raised at that point.
Response Guidelines
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Sara Anne Helmers/
Trademark Examining Attorney
Law Office 126
(571) 270-3639
sara.helmers@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.