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  76/492248

 

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

 

LIKELIHOOD OF CONFUSION

The examining attorney refuses registration under the Trademark Act, Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services so resembles the marks in U.S. Registration Nos. 2427308 and 2548912 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP, Section 1207.  (Please see the enclosed registrations.)

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion between the applicant’s mark and a registered mark.  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).

 

The applicant has applied to register the mark LIQUID MUSIC.  The registered marks are LIQUID MUSIC and LIQID MUSIC NETWORK.  In this respect, the marks are identical or nearly identical in appearance, sound, connotation and commercial impression, and therefore, are likely to cause confusion as to the origin of the goods and services. 

 

The goods and 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 goods and 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).

 

The applicant’s services are identified as “entertainment in the nature of an amusement park ride.”  The goods and services named in the registrations include “computer software for purposes of processing or manipulating musical or audio data and for the secure transmission, receipt or playback of such data over electronic communications networks, and user manuals sold as a unit” and “providing an online computer database in the fields of entertainment and multimedia products” and “computerized on-line retail services in the fields of entertainment and multimedia products”.  All the marks are used to identify entertainment goods and/or services.  The same consumers will be exposed to the goods and services identified with all the marks.  The similarities among the marks and the goods and services of the parties are so great as to create a likelihood of confusion.

 

Accordingly, in view of the closely related nature of the goods and services of the parties and the identical and strongly similar nature of the marks and their commercial impressions, confusion as to the source of the goods and services is likely under Section 2(d) of the Trademark Act.

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.

PRIOR PENDING APPLICATIONS

The examining attorney encloses information regarding pending Application Serial Nos. 78035583 and 78096397.  The filing dates of the referenced applications precede the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If any of the referenced applications mature into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

The applicant may present arguments related to the potential conflict between the relevant applications or other arguments. The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

ADDITIONAL INFORMATION REQUIRED

In order to allow for proper examination of this application, including the final determination as to whether the term is descriptive in relation to the services, the applicant must submit samples of advertisements or promotional materials for the services or, if unavailable, for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose, and channels of trade of the services identified in the application.

 

In addition, the applicant must state whether the wording “LIQUID” or “MUSIC” has any significance in the relevant trade or industry or as applied to the services.  37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.

 

The examining attorney may request the applicant to furnish information.  37 C.F.R. §2.61(b).  See TMEP Section 1105.02.  Please note that, if the applicant does not comply with the examining attorney's request for information, the Trademark Trial and Appeal Board has upheld a final refusal based on an applicant’s failure to comply with an examining attorney's request.  See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990)

 

 

 

 

/jmck/

John M. C. Kelly

Trademark Examining Attorney

Law Office 112

703 308 9112 ext 128

Fax: 703 746 8112 (official responses)

 

 

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.