Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 04, 2021

 

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.

 

SUMMARY OF ISSUES:

• Trademark Act Section 2(d)
• Recitation of Services
• Prior Pending

 

General Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4303162, 6021082, and 4866366.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Determination of Likelihood of Confusion

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Comparing 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).

 

The applicant’s mark is VIVO and the registrants’ marks are VIVOBAREFOOT, VIVOTION and VIVOGYM.  

 

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 this case, the marks of all the parties contain the common prefix VIVO. Consumers seeing the respective marks of the parties together would conclude that the marks come from a common source. It is likely that the consumer will focus on the VIVO portion of the marks of the parties since it is the first word of each party’s mark. The marks create a confusingly similar commercial impression, because the marks of the parties all contain VIVO. Therefore, the similarities in the elements that exist are sufficient to find a likelihood of confusion.

 

Comparing the Goods/Services

 

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 and/or services] 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).

 

The applicant’s services are, in pertinent part, “Health club services, namely, providing instruction and equipment in the field of physical exercise” and the registrant’s services are “Educational services, namely, providing instruction and training on walking, sporting activities, physical exercise and fitness, and exercise training, including advice pertaining to footwear therefor; educational services, namely, providing online instruction in the field of walking, exercise and sporting activities including instruction pertaining to footwear therefor and exercise instruction pertaining to injury reduction; physical fitness training services in relation to walking, exercise, sporting activities; physical fitness training on how to walk, run and move correctly while exercising; physical fitness training services regarding the selection of proper footwear for use in, walking and sporting activities; educational services, namely, providing a website featuring instruction and training on walking, physical exercise during sporting activities, physical exercise and fitness, exercise training, and training regarding the selection of footwear therefor; organizing and providing programs and events featuring recreational and competitive sporting activities, namely, training and coaching clinics, seminars, courses and workshops about recreational and competitive sporting activities,” “Gymnasium services; provision of specialized facilities for fitness instruction in the field of gymnasium facilities; gym activity and instruction classes, namely conducting fitness classes; leisure centre, namely gymnasiums, health club, fitness centre and gymnasium services; health clubs for physical exercise featuring swimming facilities, saunas, steam rooms and spas; provision of discotheque services; provision of recreational facilities; provision of facilities relating to gymnastics, weight training, body building, aerobics and physical exercise, instructional services relating to gymnastics, weight training, body building, aerobics and physical exercise, physical rehabilitation, diet nutrition, health club services, namely, providing instruction and equipment in the field of physical exercise,” and “Education services, namely, providing live and on-line training in the field of personal physical fitness training.”  The services of the parties are related, because they are all “providing instruction and equipment in the field of physical exercise.”

 

Determining 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 uses broad wording to describe “Health club services, namely, providing instruction and equipment in the field of physical exercise,” which presumably encompasses all services of the type described, including registrants’ more narrow “Educational services, namely, providing instruction and training on walking, sporting activities, physical exercise and fitness, and exercise training, including advice pertaining to footwear therefor; educational services, namely, providing online instruction in the field of walking, exercise and sporting activities including instruction pertaining to footwear therefor and exercise instruction pertaining to injury reduction; physical fitness training services in relation to walking, exercise, sporting activities; physical fitness training on how to walk, run and move correctly while exercising; physical fitness training services regarding the selection of proper footwear for use in, walking and sporting activities; educational services, namely, providing a website featuring instruction and training on walking, physical exercise during sporting activities, physical exercise and fitness, exercise training, and training regarding the selection of footwear therefor; organizing and providing programs and events featuring recreational and competitive sporting activities, namely, training and coaching clinics, seminars, courses and workshops about recreational and competitive sporting activities,” “Gymnasium services; provision of specialized facilities for fitness instruction in the field of gymnasium facilities; gym activity and instruction classes, namely conducting fitness classes; leisure centre, namely gymnasiums, health club, fitness centre and gymnasium services; health clubs for physical exercise featuring swimming facilities, saunas, steam rooms and spas; provision of discotheque services; provision of recreational facilities; provision of facilities relating to gymnastics, weight training, body building, aerobics and physical exercise, instructional services relating to gymnastics, weight training, body building, aerobics and physical exercise, physical rehabilitation, diet nutrition, health club services, namely, providing instruction and equipment in the field of physical exercise,” and “Education services, namely, providing live and on-line training in the field of personal physical fitness training.”  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 registrant’s 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 services are related.

 

Because of the similarities between the marks and the services of the parties, a likelihood of confusion is created.

 

Recitation of Services

 

The wording “Arranging and conducting conferences; Arranging and conducting congresses” in the identification of services is indefinite, overbroad and must be clarified because it does not specify the subject matter of the conferences and congresses.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

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 services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

The recitation of services should be amended to read as follows, if accurate:

 

Research in the field of education; Instruction services, namely, providing training in the field of information technology and telecommunications; Providing information about education; IT training services; Entertainment and educational services in the nature of competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; Organization of exhibitions for cultural or educational purposes; Arranging and conducting of conferences in the field of {indicate, e.g., telecommunications technology, economics, fashion, intellectual property law, etc.}; Arranging and conducting educational congresses in the field of {indicate, e.g., science and technology, math, law, etc.}; Publishing of electronic publications; Photography; Photographic reporting; Microfilming; News reporters services; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members; Party planning; Entertainment services, namely, providing online electronic games; Organization of lotteries; Health club services, namely, providing instruction and equipment in the field of physical exercise; Rental of toys; Game equipment rental; Providing user reviews for entertainment or cultural purposes; Providing user rankings for entertainment or cultural purposes; Providing user ratings for entertainment or cultural purposes; Providing online music, not downloadable; Providing on-line videos featuring entertainment, social networking, mobile phone advertisements, smart phone advertisements, tablet computer advertisements, smart watches advertisements, and smartglasses advertisements, not downloadable; Entertainment services, namely, providing online video games; Mobile library services; Virtual reality game services provided on-line from a computer network in International Class 41.

 

Prior Pending Application

 

The filing dates of pending U.S. Application Serial Nos. 88879771 and 88879765 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

 

Response

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

 

 

/Charles L. Jenkins, Jr./

Charles L. Jenkins, Jr.

Trademark Attorney

Law Office 112

571-272-9305

charles.jenkins@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 04, 2021 for

U.S. Trademark Application Serial No. 90131419

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Charles L. Jenkins, Jr./

Charles L. Jenkins, Jr.

Trademark Attorney

Law Office 112

571-272-9305

charles.jenkins@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 04, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”