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:  April 12, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 18, 2021.

 

In a previous Office action dated September 25, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services and provide an application signature.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: identification has been amended and application signature has been provided.  See TMEP §§713.02, 714.04. 

 

Upon further review of the application, it has been determined that an additional refusal must issue because of likelihood of confusion with an additional mark.  The trademark examining attorney sincerely apologizes for any inconvenience that the subsequent refusal may cause the applicant.

 

SUMMARY OF ISSUES that applicant must address:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Applicant must respond to all issues raised in this Office action within six months from the date of this Office action to avoid abandonment of the application.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1104.10(a).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Refusal to register the applied-for mark because of a likelihood of confusion with the marks in U.S. Registration No. 5749175 and 4028311 is hereby maintained and continued.  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 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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applied-for mark is “UPNEXT” for “Providing information to support low-income, minority and first-generation college students in the nature of advice relating to college selection, completing admissions applications and forms, the overall college admission process, and applying for federal student aid, all through text messaging; providing information in the field of educational opportunities for low-income, minority and first-generation college students, all through text messaging” in international class 41.

 

U.S. Registration No. 5749175 is for the mark “NEXT UP” and is used in connection with “Education services, namely, providing educational mentoring services and programs in the fields of sports and extracurricular activities; instruction in the nature of skateboarding lessons; education services, namely, providing tutoring, classes, seminars and workshops in the fields of elementary school, middle school, and high school academics, art, and health; providing an after school educational program for children in grades 1-12.” in International Class 41.

 

U.S. Registration No. 4028311 is for the mark “NEXT UP FOUNDATION N U” and is used in connection with “Educational services, namely, providing educational mentoring services and programs in the field of sports and extra-curricular activities” in international class 41.

 

Both marks are owned by NEXT UP FOUNDATION INC.  

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

In this case, applicant's mark, “UPNEXT”, is confusingly similar to registrant’s mark, “NEXT UP” and “NEXT UP FOUNDATION NU”, because the marks are highly similar in sound, appearance, connotation, and commercial impression.

 

Specifically, the marks are comprised of the wording “UP” and “NEXT”. Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil). In this case, confusion is likely because “UP NEXT” and “NEXTUP” create substantially similar overall commercial impression in the minds of consumers. Therefore, the marks are confusingly similar.

 

U.S. Registration No. 4028311 contains the additional wording “FOUNDATION N U”. This additional wording does not obviate the similarity between the marks because 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). In this case, this additional wording does not alter the commercial impression significantly enough to overcome the shared similarities.

 

Ultimately, applicant’s mark is likely to cause confusion with the registered marks because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers.  Thus the marks are confusingly similar.

 

Comparison of the 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).

 

In this case, both applicant and registrant use the marks on similar and/or closely related services.

 

The attached Internet evidence, consisting of providers of information for college students, “educational mentoring services” and “providing tutoring, classes, seminars and workshops in the fields of elementary school, middle school, and high school academics, art, and health”, establishes that the same entity commonly manufactures, produces, or 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).

 

Kathine Anne Porter School

• Classes, seminars and workshops in the fields of elementary school, middle school, and high school academics, art, and health

o   https://www.kapschool.org/20202021-course-catalog

• Information relating to college prep through text messaging

o   https://www.kapschool.org/college-preparation

 

Ivy Academic Prep

• Tutoring in the fields of elementary school, middle school, and high school academics, art, and health

o   https://www.ivyacademicprep.com/elite-test-preparation-tutoring  

• Information relating to college prep through text messaging

o   https://www.ivyacademicprep.com/college-admissions-evaluation-services

 

College Advising Corps

• Education Services (Mentoring): https://advisingcorps.org/become-an-adviser/about-the-job/  
• Providing Information to Support Low Income, Minority, & 1st Generation College Students: https://advisingcorps.org/our-work/what-we-do/  

 

Consideration of Applicant’s Arguments

 

Applicant has amended the applicant’s identification of services and argues that the services are provided by the applicant and the registrant are different. However, the additional attached evidence shows that the services provided by the applicant and the services provided by the registrant are commonly provided by the same source. Therefore, the services remain closely related.

 

Applicant argues that the registrant’s specimen does not show any use of the mark in connection with college admissions and information. This argument is unpersuasive because the fact that the services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source or sponsorship of those services.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

Applicant argues that buyers are expected to exercise a higher degree of care with respect to unique services. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

Applicant argues that the marks are different because they start with different words and argues that there is no possibility the marks will ever be pronounced the same. This argument is unpersuasive because Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil). In this case, confusion is likely because “UPNEXT” and “NEXTUP” create substantially similar overall commercial impression in the minds of consumers. Therefore, the marks are confusingly similar.

 

Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Therefore, upon encountering “UPNEXT”, “NEXT UP FOUNDATION N U” and “NEXT UP” 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 marks in U.S. Registration Nos. 5749175 and 4028311. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

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.    

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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.