United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88289470
Mark: BECOMING
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Correspondence Address: |
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Applicant: Renegade44 Management, LLC
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Reference/Docket No. 124003-4005
Correspondence Email Address: |
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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: November 19, 2019
This Office action is supplemental to and supersedes the previous Office action issued on April 18, 2019 in connection with this application. Based on the prior pending application Serial No. 88160421 registering, the trademark examining attorney now issues the following new refusal: Section 2(d) Partial Refusal for Likelihood of Confusion with Registration No. 5888717. See TMEP §§706, 711.02.
In a previous Office action dated April 18, 2019, applicant was advised of prior pending applications that may act as a bar to registration, and required to amend the identification services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §713.02.
In addition, applicant claimed ownership of prior pending application Serial Nos. 87848079, 87848098, 88016051, and 88016070. Thus, these applications no longer present a potential bar to registration of applicant’s mark. See id.
The following is a SUMMARY OF ISSUE that applicant must address:
• NEW ISSUE: Section 2(d) Partial Refusal for Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES TO CLASS 41 ONLY
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
SECTION 2(d) PARTIAL REFUSAL FOR LIKELIHOOD OF CONFUSION
Applicant’s applied-for mark is BECOMING in standard characters for, in relevant part, “Providing a website featuring information about Michelle Obama; Educational services, namely, providing public speaking services in the fields of civic engagement, political participation, and public policy” in International Class 41.
Registrant’s mark is BECOMING HER in standard characters for “Education services, namely, mentoring in the field of female empowerment; Education services, namely, providing classes, seminars, workshops, presentations, retreats, podcasts, and radio shows in the fields of female empowerment; Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of female empowerment” in International Class 41.
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 goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Applicant’s applied-for mark is BECOMING in standard characters. Registrant’s mark is BECOMING HER in standard characters. In the present case, the marks are identical in part.
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).
Therefore, the marks are confusingly similar.
Relatedness of the Services
Applicant’s services are for, in relevant part, “Providing a website featuring information about Michelle Obama; Educational services, namely, providing public speaking services in the fields of civic engagement, political participation, and public policy” in International Class 41.
Registrant’s services are for “Education services, namely, mentoring in the field of female empowerment; Education services, namely, providing classes, seminars, workshops, presentations, retreats, podcasts, and radio shows in the fields of female empowerment; Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of female empowerment” in International Class 41.
Here, applicant and registrant provide related education services.
Finally, 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).
In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these services originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address the refusal 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.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: International Class 41. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following classes only: International Classes 4, 14, 16, 18, 20, 21, 25, and 27. See TMEP §718.02(a).
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.
How to respond. Click to file a response to this nonfinal Office action
/LaShawnda Elliott/
Trademark Attorney
United States Patent and Trademark Office
Law Office 125
(571) 272-5409
lashawnda.elliott@uspto.gov
RESPONSE GUIDANCE