United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90020224
Mark: HONEYCOMB
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Correspondence Address: |
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Applicant: Hcomb Venture 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: October 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 APPLICATION ADVISORY
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 mark in the referenced application. 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
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.
Here, applicant’s mark is “HONEYCOMB” for “Providing a website featuring health and fitness information and videos for consumers and fitness participants. Online store for fitness products and services and apparel, bags and drinking vessels products.”
The mark cited registration no. 5281511 is “HONEYCOMB GIFTS AND GREETINGS” for “On-line retail gift shops; On-line retail store services featuring greeting cards, spa packages, and gift baskets; Providing a website used to place on-line commercial orders in the field of health, beauty and wellness gifts.”
The mark cited registration no. 5666189 is “HONEYCOMB MOMS” for “Providing a website featuring blogs and non-downloadable publications in the nature of articles to help parents and expectant parents in the fields of parenting concerning education and entertainment of children, motherhood, child birth, pregnancy, family travel, family health and nutrition, and marriage and healthy relationships to benefit children.”
The mark cited registration no. 2898814 is “HONEYCOMB CANYON” for “ski resort services; cross country ski resort services; backcountry ski area resort services; biking resort services; ski and snowboarding resort services; recreational services, namely providing lift rides, ski and snowboarding facilities, cross country ski facilities, backcountry ski facilities, biking facilities, ski and snowboarding activities, cross country ski activities, backcountry ski activities, snowshoeing activities, biking activities, ski races, sports and fitness programs and activities in the nature of skiing, snowboarding, cross country skiing, backcountry skiing, snowshoeing, biking, hiking, and backcountry tours; providing facilities for educational seminars and retreats; educational services, namely conducting classes pertaining to skiing, cross country skiing, snowboarding, snowshoeing, avalanche dogs, and nature; sporting goods equipment rental services; resort equipment rental services; children and youth summer camps; and youth sports clubs.”
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).
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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or 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 this case each of the registered marks has disclaimed all of the wording except “HONEYCOMB”. Accordingly, this is considered the more dominant portion of the marks.
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
In the present case, the applicant’s mark and the cited registration are similar in appearance because the dominant portion of each of the cited registrations is the same as the applicant’s mark in its entirety. 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 registrant’s 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 marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from the registered marks. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective services. Therefore, the marks are confusingly similar.
Relatedness of the Services
Cited Registration No. 5281511
The refusal pertaining to this registration apples only to the services identified as “Online store for fitness products and services and apparel, bags and drinking vessels products.”
Cited Registration Nos. 5666189 and 2898814
The refusal pertaining to these registrations applies only to the services identified as “Providing a website featuring health and fitness information and videos for consumers and fitness participants.”
The attached Internet evidence, consisting of screen shots of third-party websites, shows the same entity offering the services of the types identified by the applicant and the services of the types identified by the registrant. In particular, screenshots from American Family Fitness, Family Time Fitness, and YMCA all show the same entity offering online health and fitness information and, along with fitness programs and online information about family health and similar subjects under the same mark. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark. Thus, 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).
Thus, upon encountering applicant’s and registrant’s marks, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source. Accordingly, applicant’s mark must be refused under Section 2(d) of the Trademark Act.
IDENTIFICATION OF SERVICES
Applicant should note that the services of providing information via a website is generally classified according to the nature of the information. See id. According, “providing a website featuring health and fitness information and videos for consumers and fitness participants” includes services in multiple classes and must be clarified. For example, providing health information is in class 44, providing fitness information is in class 41, and providing consumer information is in class 35. Applicant must also further clarify the nature of its “store services.” See below. Further, applicant should not use periods in the identification. See TMEP §1402.01(a). Instead, applicant must use commas or semicolons to separate clauses. Therefore, the period should be removed and replaced accordingly.
Applicant may substitute the following wording, if accurate:
Class 35: Providing a website featuring consumer information in the field of health and fitness products for consumers and fitness participants; online {further specify the nature of the services in class 35 by common commercial name, e.g., retail} store
services for fitness products and services and apparel, bags and drinking vessels products
Class 41: Providing a website featuring fitness information and videos in the field of health and fitness for consumers and fitness participants.
Class 44: Providing a website featuring health information for consumers and fitness participants.
Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e).
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 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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.
How to respond. Click to file a response to this nonfinal Office action.
ASSISTANCE
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.
Applicants may also contact the Trademark Assistance Center with questions about navigating electronic forms, application status updates, and other issues by e-mailing TrademarkAssistanceCenter@uspto.gov or calling 1-571-272-9250.
/Jonathan Ryan O'Rourke/
Examining Attorney
Law Office 104
United States Patent & Trademark Office
571-270-1561
jonathan.orourke@uspto.gov
RESPONSE GUIDANCE