UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/011279

 

This letter responds to the applicant's communication filed on January 31, 2001.  Registration was refused under Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4), because the mark is primarily merely a surname.  Upon further consideration, the refusal is hereby WITHDRAWN.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2350745  as to be likely, when used in connection with the identified services, to cause confusion, or to cause mistake, or to deceive.  The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and CONTINUED. 

 

The prior pending Application SN 75853077 has abandoned.  The prior pending Application SNs 75913007 and 75913008 have matured to U.S. Registration Nos. 2724748 and 2724749.  Accordingly, refusal is made as to these registrations below. 

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

LIKELIHOOD OF CONFUSION – International Class 035

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services in IC 035, so resembles the mark in U.S. Registration Nos. 2724748 and 2724749 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

The applicant’s mark, HIPP, is highly similar in sound, connotation and commercial impression to the wording of the registrant’s marks, HIP MEDIA (one in typed form, the other in special form and owned by the same party).  The variant spelling in the applicant’s mark does not change the sound of the marks, and the meaning of the words is the same when the marks are spoken.  The marks are essentially phonetic equivalents and are thus similar sounding.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).  The additional wording in the registrant’s marks, MEDIA, is merely descriptive of the means by which the registrant’s services are rendered, and would not be perceived as having source identifying significance with respect to the services.  The connotation of the word HIP (misspelled by the applicant, but having the same sound as the registrant’s mark) is the same, and has the same relevant suggestiveness regarding the nature of the services.

 

The registrant’s mark is for use in connection with “dissemination of advertising matter; dissemination of advertising for others via an global computer network; promoting the marketing of goods and services of others through distribution of printed materials and by a global computer network.”  The applicant proposes using the mark in connection with “advertising services, namely, promoting the goods and services of others over a global computer network; market research services, namely, providing others with specific and general information about users of digital audio music and video files.”  The services provided by the registrant are presumed to include those provided by the applicant, as both parties’ services are providing advertising services, and, in fact, using the same media, e.g., via a global computer network.  Consumers are likely to believe that the services emanate from a common source, particularly consumers for advertising services who may rely in part on word of mouth recommendations from others.

 

Overall, the similarities among the marks and the services are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

Note Regarding Previously Cited U.S. Registration No. 2350745  - IC 009 and 03

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2350745 as to be likely, when used in connection with the identified goods and services, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and CONTINUED.  This refusal is limited to the goods in IC 009 and services in IC 041. 

 

Though the applicant argues that its mark HIPP is an acronym or abbreviation for High Precision Personalization goods and services, the wording “High Precision Personalization” is not part of the mark, and there is nothing that is compelling in an argument that the public would be given to understand the term to be other than a misspelling of the word “HIP.”  This is particularly true where the wording HIP or HIPP might easily be construed to be highly suggestive with respect to the entertainment material that is the subject of the parties online information services (and applicant’s interactive software for use with a website) all pertaining to entertainment.  The wording, in its correct spelling is provided below.

 

hip adjective

Slang.

1.    Keenly aware of, knowledgeable about, or interested in the latest trends or developments.

2.               Cognizant; wise: I am hip to what's going on.

3.     Very fashionable or stylish.[1]

 

As mentioned previously, the wording CLIPS in the registrant’s mark is merely descriptive wording with respect to the services, and according given little weight in comparing the marks, particularly where the services are closely related as in this case. 

 

 

Partial Abandonment Notice

 

If applicant should fail to respond to this Office action within the six month time limit, then Classes 009, 035, and 041 will be deleted from the application and the application will proceed forward for Class 038 only.  37 C.F.R. §2.65(a).

 

RESPONSE

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Linda A. Powell/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 259

(703) 746-8106 fax

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.