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  76/503999

 

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

 

REFUSAL --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 No. 2179857 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the services, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  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 consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the services.  The overriding concern is to prevent buyer confusion as to the source of the services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

The test under Section 2(d) of the Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.

 

 

REGISTRATION NO.  2179857     PRIMETIME

 

Similarity of the Marks

 

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). 

 

The Applicant has applied to register the mark PRIMETIME.  The Registrant’s mark is PRIMETIME.  The marks are identical.

 

Comparison of the Goods and Services

 

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 identified its services as “entertainment services in the nature of a series of television programs featuring news and other subjects of current interest; and providing online information and news via the Internet.”  The Registrant’s services are identified as “entertainment services, namely an ongoing television program featuring sports highlights.”  These services are related because they are marketed to the same customers and are sold through the same channels of trade.  Confusion as to origin is likely.

 

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.

 

Ownership of Cited Registration

If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73. 

 

THE MARK IS MERELY DESCRIPTIVE

 

The applicant should also note the following additional ground for refusal.

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. 

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).  A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).  It is not necessary that a term describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  It is enough if the term describes one attribute of the services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

The applicant has applied to register the mark PRIMETIME for “entertainment services in the nature of a series of television programs featuring news and other subjects of current interest; and providing online information and news via the Internet.”  The wording “primetime” is descriptive of the time of evening during which the applicant’s television programs are shown, that is, between the hours of 7 and 11 pm.  Because the term PRIMETIME is descriptive of the applicant’s services, registration of PRIMETIME is denied.  See, dictionary definition of PRIMETIME.

 

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.

 

prime time

 
prime time noun

The evening hours, generally between 7 and 11 P.M., when the largest television audience is available.

— prime¹-time¹ (prìm¹tìm¹) adjective[1]

 

REQUEST FOR MORE INFORMATION

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990) (failure to submit patent information regarding configuration).

 

The examining attorney requires information about the services to determine whether all or part of the mark is merely descriptive as applied to the services.  TMEP sec. 814.  This may take the form of a fact sheet, marketing materials or advertisements.  If unavailable, the applicant should submit the information for services of the same type, explaining how its own services will differ.  If the services feature new technology and no competing services are available, the applicant must provide a detailed factual description of the services.

 

In all cases, the submitted factual information must make clear the services that are provided, how the services operate and the prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

Acquired Distinctiveness

 

The application indicates use of the mark for a significant time.  Therefore, the applicant may amend to seek registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  If the applicant chooses to do so by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate.

 

The mark has become distinctive of the services through the applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

The applicant must provide this statement supported by an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).

 

INFORMALITY

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Recitation of Services is Indefinite

 

The application identifies services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.  37 C.F.R. §2.6(a)(1). 

 

The wording “providing online information” is indefinite and must be amended. Moreover, the classification of the information services depends on the type of information being provided.  For example, travel information services are class 39 services, information for maintenance and repair are class 37 services, providing information on computers is a class 42 service.

 

The applicant may amend the recitation of services as follows:

 

Class 41:            Entertainment services in the nature of a series of television programs featuring news and other subjects of current interest; and providing online news information via the Internet;

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

RESPONSE GUIDELINES

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

 

/rscb/

Robin S. Chosid-Brown

Trademark Examining Attorney

Law Office 102

(703) 308-9102 ext 204

robin.chosid-brown@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.