UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/145329
APPLICANT: Infinity Media Productions LLC
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CORRESPONDENT ADDRESS: JAMES L. VANA FOLEY AND LARDNER FIRSTAR 777 E WISCONSIN AVE STE 3800 MILWAUKEE WI 53202-5367 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: AVANTE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/145329
On 1 March 2001, action on this application was suspended pending the disposition of Application Serial No. 76011390. The referenced application has matured into a registration. Therefore, registration is refused as follows.
Likelihood of Confusion-Section 2(d)
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used in connection with the identified services, is likely to be confused with the registered mark in U.S. Registration No. 2647920. See the enclosed registration.
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 (CCPA 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).
Applicant seeks to register the mark AVANTE. The registrant’s mark is AVANTE and design.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). The marks are similar in appearance, sound and commercial impression as they both contain the word, AVANTE, the dominant portion of registrant’s mark, and the only element of the applicant’s mark. The addition of the design element does not obviate the similarity between the marks. Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975). TMEP §§1207.01(b)(viii) and 1207.01(c)(ii).
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant's services are educational and entertainment services, namely, an on-going Spanish-language television news program. The registrant’s Class 41 services include production and distribution of motion pictures; distribution of radio programs for others; distribution on of television programming to cable television systems; distribution of television programs for others; entertainment services all provided through radio, television or interactive media shows all having cultural, general educational, recreational or sportive content; entertainment, namely continuing radio, television and interactive media shows all having cultural, general educational, recreational or sportive content; rental of films; production of cable television programs.
The services are related in that they both involve provision of entertainment over the television. and the subject matter of the programming could be identical. Since the identification of the registrant’s services is very broad, it is presumed that the registration encompasses all goods/services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). TMEP §1207.01(a)(iii). As a consequence a confusion as to the identity of the source of the services is likely to occur.
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.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Translation
The applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §2.61(b); TMEP §809.
/Angela Micheli/
Examining Attorney, Law Office 108
(703) 308-9108 ext. 253
(703) 746-8108 fax
angela.micheli@uspto.gov
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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.