To:
`
`Subject:
`
`Sent:
`Sent As:
`
`Ashley D. Johnson(ajohnson@dogwood-law.com)
`U.S. Trademark Application Serial No. 90780582 - NURTURED NEST - 480/2
`TM
`July 05, 2022 05:06:43 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`U.S. Application Serial No.  90780582
`
`Mark:   NURTURED NEST
`
`Correspondence Address:  
`Ashley D. Johnson
`DOGWOOD PATENT AND TRADEMARK LAW
`4801 GLENWOOD AVE., STE. 200
`RALEIGH NC 27612 UNITED STATES
`
`Applicant:   THE NURTURED NEST, INC.
`
`Reference/Docket No.  480/2 TM
`
`Correspondence Email Address:   ajohnson@dogwood-law.com
`
`
`
`
`
`
`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:   July 05, 2022
`
`This Office Action is in response to applicant's Response to Office Action, dated May 26, 2022.
`
`In a previous Office action dated March 14, 2022, the following issues were outstanding with this
`application:
`
`
`

`

`1.
`2.
`3.
`4.
`5.
`
`Section 2(d) Refusal – Likelihood of Confusion
`Identification of Services Indefinite and Overly Broad – Amendment Required
`Clarification of The Number of Classes For Which Registration Is Sought Required
`Advisory – Multiple Class Application Requirements for Applications Based On Section 1(a)
`Representative Specimens Required
`
`
`In the Response, applicant:
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`•
`•
`•
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`Provided arguments against the Section 2(d) Refusal;
`Provided an additional specimen; and
`Amended the Identification of Services.
`
`
`The examining attorney has reviewed the applicants response and determined the following:
`
`
`1.
`
`2.
`
`3.
`
`Applicant's arguments against the Section 2(d) Refusal are not persuasive and the Section  2(d)
`Refusal – Likelihood of Confusion is maintained and CONTINUED;
`The assigned trademark examining attorney inadvertently omitted a requirement relevant to the
`mark in the subject application. See TMEP §§706, 711.02. Specifically, there is still indefinite
`wording in the identification of services that was not raised in the previous office action. The
`details are set forth below.  The trademark examining attorney apologizes for any inconvenience
`caused by the delay in raising this issue. Accordingly, the Clarification of Number of Classes
`Requirement is satisfied and the Amended Identification Requirement is maintained and
`CONTINUED; and
`Applicant's additional specimen is accepted and made of record. Accordingly, the Representative
`Specimens Requirement is satisfied.
`
`
`Applicant must respond to all issues raised in this Office action and the previous March 14, 2022,
`Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see
`TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned.
`37 C.F.R. §2.65(a).
`
`SUMMARY OF ISSUES:
`•
`Section 2(d) Refusal - Likelihood of Confusion
`NEW ISSUE: Identification of Services Indefinite - Amendment Required 
`•
`
`
`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. 6564039.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
`§§1207.01 et seq.  See the previously attached registration.
`
`Applicant has applied to register the mark NURTURED NEST for use in connection with “Education
`services, namely, providing classes, online classes, seminars, workshops and non-downloadable
`webinars in the fields of labor, childbirth, breastfeeding, infant sleep, postpartum, grandparenting,
`infant safety, infant feeding, introducing technology to toddlers and children, new dads, child safety,
`pelvic floor education, dogs and children, childhood behaviors, feeding children, family meal planning,
`guidance and tips for children ages 0-18; Educational programs, namely, pre-schools; Providing
`classroom instruction at the preschool level using hands on, sensory, scripted, artistic, game-based,
`play-based, or auditory principles” in Class 41.
`
`

`

`
`The registered mark is NURTURED NESTS for use in connection with “Providing a website featuring
`information regarding healthy living and lifestyle wellness” in Class 44.
`
`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 goods [or services] and
`differences in the marks.”); TMEP §1207.01. 
`
`Similarity 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).
`
`Here, applicant's mark, NURTURED NEST, is confusingly similar to the registered mark,
`NURTURED NESTS. In particular, the marks share the identical terms NURTURED and NEST.
`Accordingly, because of this shared wording, the marks convey the same commercial impression of
`raising or educating in a home. See the previously attached definitions of nurtured and nest from the
`American Heritage Dictionary.
`
`The fact that the term NEST is in plural form in the registered mark does not diminish the confusing
`similarity of the marks for purposes of Section 2(d). An applied-for mark that is the singular or plural
`form of a registered mark is essentially identical in sound, appearance, meaning, and commercial
`impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115
`USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the
`singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty
`Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to
`be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341
`
`

`

`(C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE
`such that the marks were considered the same mark). In this case, the term in applicant's mark, NEST,
`is the singular form of the term in registrant's mark, NESTS. The terms are essentially identical and
`create an overall similar commercial impression of a home.
`
`Preliminary Response to Applicant's Arguments
`
`Applicant asserts that the marks are sufficiently different in visual appearance and pronunciation
`because the term NEST in registrant's mark is in the plural form. Further applicant argues that the
`marks convey different commercial impressions. Specifically, that applicant's mark creates the
`commercial impression of providing educational materials to families on parenting from experts in
`the field and the registered mark creates the commercial impression of a bird's nest, which birds use to
`lay eggs and shelter their young.  
`
`The Trademark Trial and Appeal Board has held that a n applied-for mark that is the singular or plural
`form of a registered mark is essentially identical in sound, appearance, meaning, and commercial
`impression, and thus the marks are confusingly similar.  Applicant has not provided any evidence to
`support its contention that the letter S at the end of the word NEST changes the word such that it
`creates a different commercial impression. In this case, the nature of applicant's and registrant's services
`do not change the commercial impression of the words in the marks. As the previously attached
`evidence establishes,  the marks convey the same commercial impression of a home that is nourished or
`cultivated. Accordingly, applicant's arguments are unpersuasive to overcome the refusal.
`
`Ultimately, when purchasers call for the services of applicant and registrant using NURTURED NEST
`and NURTURED NESTS, they are likely to be confused as to the sources of those services by the
`similarities between the marks. Thus, the marks are confusingly similar.
`
`Relatedness of the Services
`
`The services are compared to determine whether they are similar, commercially related, or travel in the
`same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101
`USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165,
`64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
`
`Here, applicant's Class 41, “Education services, namely, providing classes, online classes, seminars,
`workshops, webinars in the fields of labor, childbirth, breastfeeding, infant sleep, postpartum,
`grandparenting, infant safety, infant feeding, introducing technology to toddlers and children, new
`dads, child safety, pelvic floor education, dogs and children, childhood behaviors, feeding children,
`family meal planning, guidance and tips for children ages 0-18; Educational programs, namely, pre-
`schools; Providing classroom instruction at the preschool level using virtual and online principles,” are
`closely related to registrant's Class 44, “Providing a website featuring information regarding healthy
`living and lifestyle wellness.”
`
`The previously attached Internet evidence, consisting of webpages from AFHK, Be Strong Families,
`Family Paths, Happy Baby, Walnut Montessori, Childtime Learning Center and Everbrook Academy,
`establishes that the same entity commonly provides the relevant services and markets the services under
`the same mark. Thus, applicant's and registrants 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).
`
`

`

`
`Preliminary Response to Applicant's Arguments
`
`Applicant asserts that applicant's and registrant's services are significantly different. Specifically,
`applicant argues that registrant's services consist of a website featuring ways to create an
`environmentally friendly living space. Additionally, applicant asserts that the different classes are
`indicative of the difference in the services themselves and that there are numerous registered marks
`used with services in both Classes 41 and 44 that differ by only the final letter "S". Applicant also
`contends that the sophistication of applicant's and registrant's consumers reduces the likelihood of
`confusion. 
`
`First, determining a 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. Additionally, the fact that
`virtually identical marks coexist on the register in both Classes 41 and 44 for predominantly different
`services
`is not probative. In
`this case,
`the registration uses broad wording
`to describe
`providing information regarding healthy living and lifestyle wellness which encompasses the various
`subject matters of applicant's educational services, e.g., labor, childbirth, breastfeeding, feeding
`children, family meal planning, etc. Further, the evidence of record establishes that applicant's and
`registrant's services are often offered by the same entity under the same mark.  Moreover, the fact that
`purchasers may be sophisticated in a particular field does not mean they are immune from source
`confusion. Accordingly, applicant's arguments are unpersuasive to overcome the refusal.
`
`When purchasers encounter the educational services and information about healthy living services of
`applicant and registrant, they are likely to be confused as to the source of the services by the
`commercial relationship between them in the marketplace. Thus, the services are closely related.
`
`Therefore, because the marks are confusingly similar, and the services are closely related, purchasers
`encountering these services are likely to believe, mistakenly, that they emanate from a common source.
`Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of
`the Trademark Act.
`
`Response to Section 2(d) – Likelihood of Confusion Refusal
`
`Although applicant's mark has been refused registration, applicant may respond to the refusal by
`submitting evidence and arguments in support of registration.
`
`REQUIREMENT
`
`If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
`
`IDENTIFICATION OF SERVICES INDEFINITE - AMENDMENT REQUIRED
`
`The wording “postpartum", "new dads", "dogs and children", "grandparenting", and "childhood
`behaviors” in the identification of services is indefinite and must be clarified because the subject matter
`of the educational services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore,
`applicant must amend this wording to clearly state the nature of the services, e.g., Education services,
`namely, providing classes, online classes, seminars, workshops and non-downloadable webinars in the
`fields of labor, childbirth, breastfeeding, infant sleep, postpartum depression, new baby classes for
`grandparents, infant safety, infant feeding, introducing technology to toddlers and children, parenting
`
`

`

`tips for new dads, child safety, pelvic floor education, teaching children how to interact with dogs,
`improving childhood behaviors, feeding children, family meal planning, guidance and tips for children
`ages 0-18.
`
`Additionally, applicant has included the term “or” in the identification of services. However, this term
`is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or
`intends to use the mark, on all the identified services; (2) the nature of the services is unclear; or (3)
`classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is
`unclear whether applicant is using the mark in connection with all of the various types of instruction .
`
`An application must specify, in an explicit manner, the particular services on or in connection with
`which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C.
`§1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “or”
`with “and” in the identification of services, if appropriate, or rewrite the identification with the “or”
`deleted and the services specified using definite and unambiguous language.
`
`Applicant may substitute the following wording, if accurate: 
`
`
`Class 41: Education services, namely, providing classes, online classes, seminars, workshops and
`non-downloadable webinars in the fields of labor, childbirth, breastfeeding, infant sleep,
`postpartum depression, new baby classes for grandparents, infant safety, infant feeding,
`introducing technology to toddlers and children, parenting tips for  new dads, child safety, pelvic
`floor education, teaching children how to interact with dogs, improving  childhood behaviors,
`feeding children, family meal planning, guidance and tips for children ages 0-18; Educational
`programs, namely, pre-schools; Providing classroom instruction at the preschool level using
`hands on, sensory, scripted, artistic, game-based, play-based  and auditory principles
`
`
`TMEP §1402.01
`
`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.
`
`RESPONSE GUIDELINES
`
`Response guidelines. For this application to proceed, applicant must explicitly address each refusal
`and 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.
`
`Please call or email the assigned trademark examining attorney with questions about this Office action.
`
`How to respond.   Click to file a response to this nonfinal Office action.
`
`

`

`
`
`/Danielle Anderson/
`Danielle Anderson
`Trademark Examining Attorney
`Law Office 113
`(571) 272-6143
`danielle.anderson@uspto.gov
`
`
`
`RESPONSE GUIDANCE
`
`•
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`•
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`•
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`Missing the response deadline to this letter will cause the application to abandon.  The
`response must be received by the USPTO before midnight Eastern Time of the last day of the
`response period.  TEAS 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 July 05, 2022 for
`U.S. Trademark Application Serial No.  90780582
`
`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. 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
`
`•
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`•
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`•
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`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 trademark-related scams . Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. And all official USPTO correspondence will only be emailed
`from the domain “@uspto.gov.” Verify the correspondence originated from us by using
`your Serial Number in our database, TSDR, to confirm that it appears under the
`“Documents” tab, or contact the Trademark Assistance Center. 
`
`

`

`•
`
`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 is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
`
` 
`