To: | CareerView, Inc. (jordan.lavine@flastergreenberg.com) |
Subject: | U.S. Trademark Application Serial No. 88767684 - LIMELIGHT - N/A |
Sent: | April 09, 2020 12:57:11 PM |
Sent As: | ecom121@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88767684
Mark: LIMELIGHT
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Correspondence Address: |
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Applicant: CareerView, 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: April 09, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – LIMITED
THIS PARTIAL REFUSAL APPLIES TO CLASS 035 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4939355 and 5371727. 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 LIMELIGHT (in standard character form) for the relevant services: “Employment agency services, namely, filling the temporary and permanent staffing needs of businesses; Employment counseling and recruiting; Employment hiring, recruiting, placement, staffing and career networking services; Employment recruiting services; Providing employment counseling services; Providing an on-line searchable database featuring employment opportunities; Providing an on-line searchable database featuring classified ad listings and employment opportunities; Providing networking opportunities for individuals seeking employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings, and resumes; Providing on-line employment placement services, namely, matching resumes and potential employers via a global computer network; Providing online databases featuring information relating to employers and employees and places of employment; Employment recruiting consultation services; Career placement consulting services; Providing a website with information in the field of employment and employment opportunities.”
Registration No. 4939355’s mark is DLM DIGITAL LIMELIGHT MEDIA (in stylized character and design form) for “Consulting services in the field of internet marketing.”
Registration No. 5371727’s mark is MISSION LIMELIGHT (in standard character form) for “Marketing consulting services relating to long-term business strategy development for non-profit organizations; Business consultation services to assist non-profit organizations in planning, managing, and conducting fundraising activities via a global computer network; Providing a website featuring an online marketplace for exchanging goods and services with other users.”
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 [and services] and differences in the marks.”); TMEP §1207.01.
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 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).
In the present case, applicant’s mark LIMELIGHT is similar to the registered mark DLM DIGITAL LIMELIGHT MEDIA and MISSION LIMELIGHT in sound, appearance, and connotation.
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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Here, the word portion of Registration No. 4939355’s mark is more significant than the design elements when comparing the marks. 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)).
Further, the descriptive words “DIGITAL”, “MEDIA”, and “MISSION in the registered marks mark are also less significant when comparing the marks. 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). Here, registrants have disclaimed the descriptive words “DIGITAL”, “MEDIA”, and “MISSION”. Thus, these wordings are less significant when comparing the marks, thereby rendering the word “LIMELIGHT” as a more significant portion of the mark.
In this case, applicant’s mark is “LIMELIGHT” and the dominant portion of registrants’ marks is “LIMELIGHT”. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks. 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 contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
In fact, registrants’ marks incorporate the entirety of applicant’s mark within its own. 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.
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). In this case, the marks are confusingly similar because they have the same wording “LIMELIGHT”. This wording creates a similar overall commercial impression such that confusion as to the source of the services offered under the respective marks is likely to result.
Therefore, for the reasons stated above, the marks are confusingly similar for purposes of a Section 2(d) analysis.
SIMILARITY AND RELATEDNESS 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 compared 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] 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).
Applicant describes its relevant services as “Employment agency services, namely, filling the temporary and permanent staffing needs of businesses; Employment counseling and recruiting; Employment hiring, recruiting, placement, staffing and career networking services; Employment recruiting services; Providing employment counseling services; Providing an on-line searchable database featuring employment opportunities; Providing an on-line searchable database featuring classified ad listings and employment opportunities; Providing networking opportunities for individuals seeking employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings, and resumes; Providing on-line employment placement services, namely, matching resumes and potential employers via a global computer network; Providing online databases featuring information relating to employers and employees and places of employment; Employment recruiting consultation services; Career placement consulting services; Providing a website with information in the field of employment and employment opportunities.”
Registration No. 4939355 describes its services as “Consulting services in the field of internet marketing.”
Registration No. 5371727 describes its services as “Marketing consulting services relating to long-term business strategy development for non-profit organizations; Business consultation services to assist non-profit organizations in planning, managing, and conducting fundraising activities via a global computer network; Providing a website featuring an online marketplace for exchanging goods and services with other users.”
In this case, applicant’s and registrant’s services are closely related because it is common for entities that provide employment services and ad listings to also provide marketing and online marketplace services. The attached Internet evidence consists of webpages from Antenna, Craigslist, Haley, and Paper Boat. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, that the relevant services are sold through the same trade channels and used by the same classes of consumers in the same fields of use, and that the services are similar or complementary in terms of purpose or function. Specifically, the evidence shows that it is common for entities to provide employment services, ad listings, marketing, and marketplace services and market these services under the same mark such that consumer encountering these services under similar marks are likely to believe they emanate from the same source. Therefore, 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).
The relatedness of applicant’s and registrant’s services establishes a likelihood of confusion. Therefore, registration must be refused under Section 2(d) of the Trademark Act.
ADVISORY – APPLICANT’S OPTIONS WHERE REFUSAL PERTAINS TO ONE OF MORE THAN TWO CLASSES
(1) Deleting the class to which the refusal pertains; or
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services 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).
If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
CLARIFICATION OF IDENTIFICATION OF SERVICES REQUIRED - LIMITED
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Several portions of the identification of services in International Class 041 are indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “providing blogs in the field of employment” in International Class 041” is indefinite and must be clarified to specify that the blogs are in the nature of “on-line journals.”
The wording “Providing online newsletters, magazines, articles, white papers, and guides in the field of employment” in International Class 041 is indefinite and must be clarified to specify that the articles and white papers are non-downloadable. Further, applicant must clarify the nature of the “guides.” For example, applicant may clarify that these goods are in the nature of “educational training manuals.”
The wording “Educational services in the nature of live and virtual conferences seminars, workshops and classes in the field of employment” in International Class 041 is indefinite and must be clarified to specify the services in relation to the educational events. For example, applicant may clarify that it is “conducting” these events. Further, the wording “conferences seminars” must be clarified by separating these terms with a comma.
The wording “Providing webcasts in the field of employment” in International Class 041 is indefinite and must be clarified to specify that these services are in the nature of entertainment services.
Applicant may substitute the following wording, if accurate:
International Class 009: [Acceptable]
International Class 035: [Acceptable]
International Class 041: On-line journals, namely, providing blogs in the field of employment; Providing online non-downloadable newsletters, magazines, articles, white papers, and guides in the nature of educational training manuals in the field of employment; Educational services in the nature of conducting live and virtual conferences, seminars, workshops, and classes in the field of employment; Entertainment services, namely, providing webcasts in the field of employment
International Class 042: [Acceptable]
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.
ADVISORY – PARTIAL ABANDONMENT
If applicant does not respond to this Office action within the six-month period for response, International Classes 035 and 041 will be deleted from the application. The application will then proceed with International Classes 009 and 042 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: Class 035 and 041. 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: Classes 009 and 042. See TMEP §718.02(a).
Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.
How to respond. Click to file a response to this nonfinal Office action.
/Peter Dang/
Trademark Examining Attorney
Law Office 121
(571) 270-1998
peter.dang@uspto.gov
RESPONSE GUIDANCE