Offc Action Outgoing

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  76/646516

 

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

Refusal – Section 2(d)

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 goods/services, so resembles the marks in U.S. Registration Nos. 1155904, 1236084 and 2901294 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (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.

Applicant has applied to register the mark THE WAY and design for “training, arranging and conducting of conferences, seminars and workshops; entertainment services; production of television programs, and dvd's; sporting and cultural activities services; sports club services; and health club services.”

 

The registrant owns the marks THE WAY, THE WAY and THE WAY INTERNATIONAL for “Educational services, namely, providing religious teaching services by means of motion pictures and slide presentations; entertainment services, namely, producing and presenting musical, dramaticomusical, and dramatic productions and presenting works of art in the field of religion; publishing of periodicals and booklets of a religious nature,” and audiotapes, videotapes, records, and cassettes.

 

With respect to the first step in the likelihood of confusion analysis, the dominant portion of each mark is the identical wording THE WAY.  Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. 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).  In addition, when a mark consists of a word portion and a design portion, as does applicant’s proposed mark, 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.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); 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).

 

With respect to the second step in the likelihood of confusion analysis, both parties provide educational and entertainment services.  Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrants and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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.

 

Indefinite Recitation of Services

The recitation of services is unacceptable because the precise nature of the services is unclear.  The applicant must amend the recitation to specify the common commercial names of the services.  If there is no common commercial name, the applicant must describe the service and its intended uses or purpose.  TMEP §1402.11; §1402.01. 

The applicant may adopt the following recitation, if accurate:

 

providing training services and arranging and conducting of educational conferences, seminars and workshops, all in the field of [indicate specific field or subject matter]; entertainment services, namely, [indicate specific nature of the service]; production of television programs; production of dvds for others; organizing community sporting and cultural events; sports club services; and health club services, namely providing instruction and equipment in the field of physical exercise, in class 041

 

The examining attorney highly recommends that the applicant consult the online Trademark Acceptable Identification of Goods and Services Manual, found on the Internet at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/, to ensure that any amendments made to the recitation of services comport with Office requirements. While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information regarding the specificity required in the applicant’s recitation of services.

 

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.

 

Drawing

 

The drawing showing the mark in black and white is unacceptable because the application claims color and fails to show the applied-for mark in color.  37 C.F.R. §2.52(b)(1).  All applications for marks claiming color must include a drawing showing the mark in color.  Applicant must therefore submit a new drawing that complies with one of the following:

 

(1)   (a) shows the mark in color, with (b) a statement that “the color(s) red and black are claimed as a feature of the mark,” and (c) a separate description specifying where the color(s) appears in the mark, i.e., “the color(s) red and black appear in (specify portion of the mark on which color(s) appear);” or

 

(2)   (a) shows the mark in black and white without color lining; and (b) a statement authorizing deletion of the color claim.  In the present case, color is not material to the commercial impression of the mark and therefore can be deleted from the drawing of the mark.  37 C.F.R. §2.72; TMEP §§807.07(d) and 807.14 et seq.

 

Transliteration

The applicant must submit a transliteration of the non-Latin characters in the mark.  37 C.F.R. §2.61(b); TMEP §809.  The statement may read as follows:  The non-Latin characters in the mark transliterate to (insert transliteration), and this means (insert translation) in English.

 

Application Pursuant to Sections 1(b) and 44(d) - Applicant May Proceed Solely on Intent-to-Use Basis

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

Telephone Encouraged for Clarification

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

 

 

 

/David Elton/

Examining Attorney

Law Office 106

Ph: 571 272-9317

Fax: 571-273-9106

 

 

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.