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  76/495324

 

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

REGISTRATION REFUSED -- Likelihood of Confusion

 

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 on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 2691433, 2665249 and 2584599 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  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 (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’s mark is LOCOMOTION for advertising agency, branding, and marketing and graphic design services.  The registered marks are LOCOMOTION for providing on-line chat rooms and message boards for transmission of messages among computer users in the field of television programming, animation and digital culture, entertainment services, namely, providing information about television programming, articles and other materials about animation and digital culture; providing information about chat rooms and message boards in the field of television programming, animation and digital culture; providing down-loadable information in the field of television programming, animation and digital culture; providing informational links in the field of television programming, animation and digital culture, rendered by means of a global computer network; LOCOMOTION.COM for entertainment services, namely, providing information about television programming, articles and other materials about animation and digital culture; providing information about chat rooms and message boards in the field of television programming, animation and digital culture; providing down-loadable information in the field of television programming, animation and digital culture; providing informational links in the field of television programming, animation and digital culture, rendered by means of a global computer network, providing on-line chat rooms and message boards for transmission of messages among computer users in the field of television programming, animation and digital culture; and LOCOMOTION (word and design) for entertainment services, namely, providing information about television programming, articles and other materials about animation and digital culture; providing information about chat rooms and message boards in the filed of television programming, animation and digital culture; providing down-loadable information in the field of television programming, animation and digital culture; providing informational links in the field of television programming, animation and digital culture, rendered by means of a global computer network,  providing on-line chat rooms and message boards for transmission of messages among computer users in the field of television programming, animation and digital culture.

                       

The marks are similar in commercial impression because of their similar appearance.  Here, dominant in the proposed and registered marks is the term LOCOMOTION.  The applicant has merely appropriated this element from the registered marks.   Moreover, with respect to the additional design element in Registration No. 2584599, it should be noted that when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).  Hence, it stands to reason that purchasers, who are familiar with the registered LOCOMOTION marks, would assume that the mark LOCOMOTION simply reflects new or special variety from the same source.  Cf. In re Compania Pesquera Vikingos de Colombia, S.A., 221 USPQ 557 (TTAB 1984).                           

 

In comparing the services, the fact that the services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular service, but likelihood of confusion as to the source of those services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.  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).  TMEP §1207.01(a)(i).  Where the marks of the respective parties are identical, or nearly identical as here, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

In comparing the services in the instant case, the relatedness of the services nexus is satisfied.  Here, the applicant’s services are broadly described as advertising agency, branding, and marketing and graphic design services.  The applicant’s and registrants’ services are related because the could be providing the same information.  The applicant’s advertising, branding, and marketing services could including advertising, marketing and branding in the form of on-line chat rooms and message boards for transmission of messages among computer users in the field of television programming, animation and digital culture, entertainment services, namely, providing information about television programming, articles and other materials about animation and digital culture; providing information about chat rooms and message boards in the field of television programming, animation and digital culture; providing down-loadable information in the field of television programming, animation and digital culture; providing informational links in the field of television programming, animation and digital culture, rendered by means of a global computer network.

 

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.

 

INFORMALITIES

 

Incorrect Classification

 

The applicant has classified some of the services incorrectly.  The applicant must amend the application to classify the services in the appropriate International Class.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.

 

Recitation of Services

 

The wording in the recitation of services is overly broad and indefinite because it could include services classified in other classes and fails to provide sufficient specificity as to the nature of the applicant’s services.  In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as "services in connection with..." or "such as" or "including" or "and like services" or "systems" or "products" or "concepts" or "not limited to...."  TMEP sections 804.08(c) and 1301.05.

 

The applicant may adopt the following recitation of services, if accurate: 

 

Class 35

Advertising agencies; branding, namely, namely, creating corporate and brand identity for others; marketing, namely, cooperative advertising and marketing and direct marketing advertising for others; and

 

Class 42

Graphic art design

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Multi-class Application

 

If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Classes 35 and 42.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

CONCLUSION

 

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

 

 

/IngridCEulin/

Ingrid C. Eulin

Law Office 111

(703) 308-9111 ext 424

(703) 308-7191 fax

(703) 746-8111 alternate 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 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.