UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/644081

 

The assigned trademark examining attorney reviewed the referenced application filed on August 2, 2005, and has determined the following.

 

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 mark in U.S. Registration No. 3056893 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 their self 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 ILLUSION for entertainment services, live performances, live music, performance tours and touring, music production, video production, visual and audio performance services, entertainment and recording services in the nature of a musician and music producer, and the creation, production, recording, distribution, and exploitation of commercial audio and video recordings. The registered mark is ILLUSION FILMS for full post production services, namely, film and video production services.

In this instance, the marks are very highly related and the services will likely be offered to the same type of consumers and through similar channels of trade. The similarities among the marks and the services are so great as to create a likelihood of confusion among consumers. Consumers are likely to believe that the applicant’s video production services are offered in connection with the video production services noted in the cited registration. As a result, consumers are likely to be confused as to the source of the applicant’s services.  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).

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:

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite because the applicant has referenced several services not falling within the scope of Class 41. More importantly, the applicant has made reference to actions which are not provided for the benefit of others, such as “touring” services Unless the applicant also engages in a service whereby tours are given or it arranges for others to have tours, then the action is merely a business undertaking utilized for the promotion of the applicant’s own goods and services. A services mark protects only the services offered for the benefit of others, not self promoting business practices.  Moreover, there is no “exploitation” service for which protection is offered. The applicant may be referring to “merchandising” or “getting movie deals” or some other action whereby the applicant can generate income from the “live musical performances.” However, it is unclear to what the applicant refers and, therefore, the applicant would have to specify the services it contemplates when noting “exploitation” and would have to submit the appropriate fees for additional Classes of services. The applicant may amend this wording to the following, if accurate:

 

Retail distributorships featuring audio and video recordings, in International Class 35.

 

Entertainment services, namely, live musical performances; music production; video production; visual and audio performance services, namely, [specify the actual services contemplated]; commercial audio and video recording services; creating commercial audio and video recordings, also known as lyric writing, in International Class 41.

 

TMEP section 1401.02.

 

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 1401.02.  Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/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 goods/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 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(a) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(b)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

The submitted specimens of record are not sufficient to show use in any Class. See below.

 

For your convenience, acceptable identifications of goods and services are available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html.

 

Standard Character Drawing Claim

 

Applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

Specimens Do Not Show Use of Mark with Specified Services

 

The specimen does not show use of the mark for any services identified in the application. “Services” are provided for the benefit of others; the applicant merely submitted a CD insert that fails to legibly make reference to the services being provided under the mark ILLUSION. That is, the specimen is not such that consumers may reasonably make a connection between the asserted mark and the services for which protection is sought; the applicant has failed to submit a specimen depicting the asserted mark being used to advertise the services. The applicant must submit a specimen showing use of the mark for the services specified.  37 C.F.R. §2.56; TMEP §904. 

 

Examples of acceptable specimens may include newspaper and magazine advertisements as well as other types of advertising that show the mark used in the sale or advertising of the services such as signs, photographs, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like.  However, printer's proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not accepted because they do not show use of the mark by the applicant in the sale or advertising of the services.  Invoices may be acceptable service mark specimens provided that they show the mark and refer to the relevant services. TMEP section 1301.04.

 

Letterhead stationery or business cards bearing the mark may be accepted if the services are clearly indicated thereon. In addition, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use where the content of the letter indicates the field or service area in which the mark is used.  However, letterhead stationery or business cards which bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion which identifies the service), because such items are not evidence that the mark is used in the sale or advertising of the particular services recited in the application.  See In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); Amica Mutual Ins. Co. v. R.H. Cosmetics Corp., 204 USPQ 155, 162 (TTAB 1979); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977); In re Piece Goods Shops, Inc., 178 USPQ 512 (TTAB 1973).

 

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.

 

Contact and Status Update Information

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at:

 

<http://portal.gov.uspto.report/external/portal/tow>. 

 

Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

 

Applicants should note that they may now file changes of correspondence address via a new form on TEAS.   Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form that is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.

 

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

 

 

/Ronald E. Aikens/

Trademark Attorney, Law Off. 103

(571) 272-9268 (wk)

(571) 273-9268 (fax)(not for Official resp.)

Ron.Aikens@USPTO.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.