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:  December 13, 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:

• Section 2(d) Refusal
• Identification of Services

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5168969, 5516361, and 5978428.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 goods and/or 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 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. 

 

Applicant’s mark is SLUSHY for, in relevant part, “Online advertising network matching services for connecting brands to social media leaders for promotional purposes; providing marketing consulting in the field of social media; On-line customer-based social media brand marketing services; Social media strategy and marketing consultancy; Marketing services in the nature of promotion of third-party goods and services by social media influencers” in Class 35 and “providing entertainment services in the fields of social and community interest groups” in Class 41.

 

The registered marks are

 

SLUSH for “Marketing services; organization of trade shows and exhibitions for commercial or advertising purposes” in Class 35.

 

SLUSH (stylized) for “Marketing services; arranging commercial fairs and exhibitions” in Class 35.

 

SLUSHII for “Entertainment services, namely, musical performances and live musical performances; entertainment in the nature of live performances by DJs and electronic dance music group; Entertainment services, namely, non-downloadable playback of audio recordings featuring music via global communications networks; Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services, namely, mixing or remixing musical sound recordings” in Class 41.

 

COMPARISON OF 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).

 

Applicant’s mark is similar in overall commercial impression to U.S. Reg. Nos. 5168969 and 5516361 because of the shared wording “SLUSH.”  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Applicant’s mark is also similar to U.S. Reg. No. 5978428 because “SLUSHY” and “SLUSHII” are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar.  In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). 

 

COMPARISON OF SERVICES 

 

Determining likelihood of confusion is 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)).  

 

In this case, U.S. Reg. Nos. 5168969 and 5516361 use broad wording to describe “marketing services,” which presumably encompasses all services of the type described, including applicant’s more narrowly recited “Online advertising network matching services for connecting brands to social media leaders for promotional purposes; providing marketing consulting in the field of social media; On-line customer-based social media brand marketing services; Social media strategy and marketing consultancy; Marketing services in the nature of promotion of third-party goods and services by social media influencers.”  The applicant’s Class 41 services, “providing entertainment services in the fields of social and community interest groups” is also broad enough to encompass the more narrowly identified entertainment services in U.S. Reg. No. 5978428.  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). 

 

Additionally, the aforementioned services of the parties have no restrictions as to 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)).  Therefore, the applicant’s and registrants’ marketing and entertainment services are related.

 

Due to the overall similarities of the marks and the relatedness of the Class 35 and Class 41 services, registration is refused under Section 2(d) of the Trademark Act.

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

 

If applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.

 

Procedural requirements

 

Identification of Services

 

The wording “Social media strategy” in the identification of services is indefinite and must be clarified by further specifying the type of strategy services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “uploading, posting, displaying, tagging” in the Class 38 identification of services is indefinite and must be amended to clarify whether these are included within applicant’s electronic bulletin board services or a separate technology service in Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant has classified “providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network in the field of adult entertainment” in International Class 38; however, the proper classification is International Class 41. 

 

The wording “providing entertainment services in the fields of social and community interest groups” in the identification of services is indefinite and must be amended by further specifying the format of the entertainment and the subject matter or field of use.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant must amend the wording “online providing of non-downloadable software for” and “online platform” to clarify whether the applicant is providing a “website featuring temporary use of non-downloadable software” featuring the described functions.

 

Applicant may substitute the following wording, if accurate: 

 

Class 35          arranging subscriptions of the online publications of others for the purpose of allowing individuals to subscribe and access content uploaded by members of the service; Online advertising network matching services for connecting brands to social media leaders for promotional purposes; business networking; providing marketing consulting in the field of social media; On-line customer-based social media brand marketing services; Social media branding strategy and marketing consultancy; Marketing services in the nature of promotion of third-party goods and services by social media influencers

 

Class 38          providing access to interactive communication blog websites on the Internet; providing Internet chatrooms; electronic transmission of data, messages, graphics, images and information by electronic networks; electronic transmission of digital photo files among internet users; providing access to computer, electronic and online databases; providing online forums for communication on topics of user interest; providing online chat rooms and electronic bulletin boards for transmission of messages among users and for uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; electronic transmission of digital photo files, videos, audio visual content and data among internet and mobile device users; electronic exchange of messages being electronic message transmission via chat lines, chatrooms and Internet forums; video-on-demand transmission services; video broadcasting; providing telecommunication internet access to a web site that gives users the ability to upload photographs

 

Class 41          providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network in the field of adult entertainment; providing entertainment services, namely, non-downloadable videos in the fields of [specify subject matter] for various social and community interest groups; publication of electronic journals and web logs featuring user generated or specified content in relation to adult entertainment; publication of text and graphic works on CD, DVD, on-line in the field of adult entertainment

 

Class 42          providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts; website featuring temporary use of non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; providing online non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; website featuring temporary use of non-downloadable software for photo sharing and use in connection with influencer-related services

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

 

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

 

 

/Yatsye I. Lee/

Trademark Examining Attorney

Law Office 107

Phone: 571-272-3897

yatsye.lee@uspto.gov (for informal inquiries)

 

 

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 December 13, 2021 for

U.S. Trademark Application Serial No. 90658940

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.