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  76/525661

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2331329.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.  This refusal does not apply to sporting activities.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

The applicant has applied to register the proposed mark SHOBU for “education; providing of training; entertainment; sporting and cultural activities.”  The registered mark is SHABOO for “ENTERTAINMENT SERVICES, NAMELY, LIVE PERFORMANCES BY A BAND; CONCERT BOOKING; AND RENTAL OF MUSICAL INSTRUMENTS AND SOUND EQUIPMENT.”

 

Comparison of the Marks

The applicant’s mark is similar in appearance, sound and commercial impression to the registered mark.  The marks are identical in sound but for the slight difference created by the lettering “A” and “O.”  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

Comparison of the Services

The applicant broadly identifies educational, training, entertainment and cultural services.  This vague identification is broad enough to include the live musical performances by a band, concert booking and rental of musical and sound equipment.  Thus, the applicant’s goods may be related to the registrant’s goods.

 

Given that the marks are similar and services may be related, consumers encountering the marks my be confused as to the source of the services.  Accordingly, the applicant’s mark is refused registration under Section 2(d) of the Trademark Act.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  The applicant may also avoid a likelihood of confusion by narrowing the scope of the services it identifies to exclude services related to the registrant’s services.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

 

Identification of Services

The wording used to describe the services needs clarification because it does not clearly identify particular types of services and may contain services from more than one class. 

 

Applicant may adopt the following identification of services, if accurate: 

 

International Class 41:  education services, namely, [specify the particular services and field, e.g., providing tutoring in the field of math, providing workshops in the field of tax preparation]; providing of training [specify the field, e.g., in the use of computers]; entertainment in the nature [specify the type and field, e.g., light shows, television news shows]; sporting activities in the nature of [specify the particular type, e.g., football games]; cultural activities in the nature of [specify the particular type, e.g., conducting entertainment exhibitions in the nature of wine festivals]

 

TMEP §1402.01.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Combined Applications

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)    

 

Translation

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  In the present case, the wording “SHOBU” needs translating for the record.  The following translation statement is suggested:  “The English translation of the word SHOBU in the mark is ___.”

 

Significance of Mark

Applicant must specify whether “SHOBU” has any significance in the applicant’s field, trade or industry or any geographical significance.  37 C.F.R. §2.61(b).

 

 

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

 

 

/Joanna Mateja/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 249

for official responses: ecom108@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.