To: | Special Needs Advocate For Parents (michelle.l.carrey@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90128321 - SNAP - N/A |
Sent: | December 30, 2020 02:59:06 PM |
Sent As: | ecom123@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90128321
Mark: SNAP
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Correspondence Address: SPECIAL NEEDS ADVOCATE FOR PARENTS
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Applicant: Special Needs Advocate For Parents
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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: December 30, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No(s). 6092604, 3691071, and 5022674. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
The applied-for mark is SNAP for “non profit-special needs advocate for parents services at reduced and free rates to provide education, support, professional advocacy and support services for special needs children and their families.”
The registered marks as follows:
S.N.A.P. SURVIVORS OF NARCISSISTIC & ABUSIVE PERSONALITIES (U.S. Reg. No. 6092604) for “Educational services, namely, conducting programs in the field of mental health.”
SNAP (U.S. Reg. No. 3691071) for “day camp services; and educational services, namely, conducting classes, seminars and workshops for children in the field of mental health.”
SNAP & design (U.S. Reg. No. 5022674) for “Providing online audio-visual entertainment information via a global computer network in the fields of motion pictures, television programming, videos, music videos and music; providing information via a global computer network in the field of entertainment; creation, development, production and distribution of entertainment content, namely, multimedia content, animations, video footage, text, still images, videos, and ongoing series featuring comedy, drama, musical entertainment, sports, health and wellness, and news broadcast online or distributed to mobile electronic devices.”
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.
i. Similarity of the Marks
In the present case, applicant’s mark is SNAP and registrants’ marks are SNAP (U.S. Reg. No. 3691071) and SNAP (U.S. Reg. No. 5022674). Thus, the word portion of these 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.
Therefore, the marks are confusingly similar.
With respect to S.N.A.P. SURVIVORS OF NARCISSISTIC & ABUSIVE PERSONALITIES (U.S. Reg. No. 6092604), the dominant portion of the mark is “S.N.A.P.”.
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 the present case, registrant has disclaimed the wording “SURVIVORS OF NARCISSISTIC & ABUSIVE PERSONALITIES” because it is merely descriptive of or generic for the registrant’s services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “S.N.A.P.” the more dominant element of the mark.
Thus, the marks are considered similar for likelihood of confusion purposes.
ii. The Services are Related
The trademark examining attorney must determine whether there is a likelihood of confusion based on the description of the goods and/or 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)).
If the application or cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application and registration encompass all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. 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). In the present case, the applicant’s identification is broadly worded and is seen to include registrants’ services. 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)). Thus, applicant’s and registrant(s)’s goods and/or services are related.
In conclusion, upon encountering applicant’s and registrants’ marks used on the identified services, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source. Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No(s). 6092604, 3691071, and 5022674. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
The identification of services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant has classified “to provide education” in International Class 45; however, the proper classification is International Class 41. Therefore, applicant may respond by (1) adding International Class 41 to the application and reclassifying these services in the proper international class, (2) deleting “to provide education” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following identification, if accurate (changes shown in bold):
CLASS 41 educational services, namely, conducting {indicate specific modes of instruction, e.g., classes, seminars, conferences, workshops} in the field of {indicate specific field, e.g., pet care, math} for special needs children and their families.
CLASS 45 providing nonprofit-special needs legal services for parents through public advocacy programs at reduced and free rates for the purpose of providing education, support, professional advocacy and support services for special needs children and their families.
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.
FEES & REQUIREMENTS FOR ADDING ADDITIONAL CLASS(ES)
The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 41 and 45. No additional specimen is required. See more information about specimens.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Julie Vo/
Julie Vo
Trademark Examining Attorney
Law Office 123
(571) 272-4880
julie.vo@uspto.gov (preferred)
RESPONSE GUIDANCE