Offc Action Outgoing

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 76/145329

 

This letter responds to the applicant's communication filed on 14 November 2003.

 

Likelihood of Confusion-Section 2(d)

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2647920 as to be likely, when used in connection with the identified services, as 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 made FINAL.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant: similarity of the marks, similarity of the services, and similarity of trade channels of the services.

 

A comparison of the marks requires an analysis of the similarities in appearance, sound, connotation and commercial impression.  Applicant seeks to register the mark AVANTE.  The registrant’s mark is AVANTE and design. The marks are similar in appearance, sound and commercial impression as they contain the term AVANTE.  The AVANTE element is the dominant feature of the registrant’s mark and the only feature of the applicant’s mark.

 

The second factor in a likelihood of confusion analysis is a comparison of the services of applicant with the services of the registrants.  Applicant's services are educational and entertainment services, namely, an on-going Spanish language television news program. The Class 41 services of the registrant include distribution of televisions programming, 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; production of closed caption television programs; production of radio and television programs.  The services are related in that they both involve entertainment and educational services in the nature of television programs.

 

It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the subject matter of the registrant’s educational and entertainment television services is very broad, it is presumed that the registration encompasses all 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). 

 

The marketing of the services touches on the last factor in the likelihood of confusion analysis that is the examination of the channels of trade.  The services of the registrants and applicant would flow in the same channels of trade.  The services would be provided to people who are interested in watching television programs that relate to cultural, recreational, educational or sportive content.

 

In summary, based on the totality of the facts--the similarities in appearance and sound of the marks, the relatedness of the services and the overlapping trade channels, a likelihood of confusion must be found to exist.

 

Translation

The requirement for a translation of the mark is made FINAL.  The following form is suggested:  The English translation of AVANTE is FORWARD.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

 

 

 

 

/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.

 

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.