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  76/530705

 

Dear Applicant and/or Applicant’s Representative:

 

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

 

Refusal to Register: Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2032268 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

Facts

 

The applicant has applied to register the mark ULTRA VIOLET for “education; providing of training; entertainment; sporting and cultural activities except musical entertainment services rendered by a musical group.”  The registered mark is ULTRAVIOLET for “musical entertainment services rendered by a group,” in International Class 41.

 

Similarities of the Marks

 

The applicant’s mark and the registered mark are similar in sound, appearance and commercial impression.  Visually, the marks are similar because both are comprised solely of the term ULTRA VIOLET.  ULTRA VIOLET and ULTRAVIOLET produce the same sound when spoken aloud, making the marks similar aurally as well.  The commercial impression created by the marks is similar in that in both cases a seemingly arbitrary term is used to indicate the source of the services.  Consumers would experience confusion when observing or speaking about the marks based upon the above-mentioned similarities.

 

The Services are Related

 

Both the applicant and registrant provide entertainment services.  These services are related because the genre is the same.  Although the applicant’s recitation seems to exclude musical groups, the services are still related.  In addition the applicant should note that if the marks of the respective parties are identical, 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). 

 

The similarities of the marks and the services are so great as to cause a likelihood of confusion among consumers.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  Therefore registration is refused under Trademark Act Section 2(d), 15 U.S.C. 1052(d).

 

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.

 

Wording in the Recitation of Services must be Amended

 

The wording “education; providing of training; entertainment; sporting and cultural activities except musical entertainment services rendered by a musical group” in the recitation of services is unacceptable as indefinite because the applicant did not list specific education and entertainment services.  Nor did the applicant specify the field of the training that is provided.  Lastly, the applicant did not indicate specific services in connection with the sporting and cultural activities.  The applicant may amend this wording to “educational services, namely, conducting training and seminars in the field of ________ (specify subject matter of the educational services); entertainment services, namely, organizing community sporting and cultural events,” in International Class 41, if accurate.  TMEP §1402.11.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

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 services that are not within the scope of the services recited in the present identification.

 

Conditional Refusal: Specimen does not Show Mark in Connection with Services

 

The specimen is unacceptable as evidence of actual service mark use because it does not show the mark ULTRA VIOLET in connection with the services listed in the application.  In the present case, the applicant provided several documents that include the term ULTRA VIOLET.  However, these documents do not show that the applicant is using the mark in connection with the educational and entertainment services listed in the application.  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.  TMEP §§904.11 and 1301.02 et seq.

 

New Drawing Required

 

The applicant provided a hand written, “typed drawing” of the mark.  The drawing is not acceptable because the mark is not typed entirely in capital letters.  37 C.F.R. §2.52(a)(1); TMEP §807.06.  The applicant must submit a new drawing.  If the applicant wishes to register the typed version of the mark, the applicant must submit a drawing on which the mark is typed entirely in capital letters.  If the applicant intends to show the mark in special form, the applicant must submit an acceptable special‑form drawing.  37 C.F.R. §2.52.

 

The requirements for a typed drawing are as follows:

 

The Office prefers that the drawing be typed on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.

 

The mark must be typed entirely in capital letters, without spaces between the letters.

 

37 C.F.R. §2.52; TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.A.9.

 

Country of Citizenship Required

 

The applicant must indicate her national citizenship for the record.  Trademark Act Section 1, 15 U.S.C. §1051; 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.

 

Trademark Counsel

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

Response Guidelines

 

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.

 

/Pamela Y. Willis/

Trademark Attorney

Law Office 106

703-308-9106 ext. 126

703-746-8106 (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.