UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/656420
APPLICANT: Summit Sports, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: IHL
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CORRESPONDENT’S REFERENCE/DOCKET NO: UT-504
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 76/656420
The assigned examining attorney has reviewed the referenced application and determined the following.
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 marks in U.S. Registration Nos. 2327538, 2327539, 2327540, and 2327541 as to be likely to cause confusion, 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.
The applicant’s mark, IHL (in standard characters), is identical to the registrant’s mark IHL, U.S. Registration No. 2327538) and is encompassed in the wording of the registrant’s marks, IHL INTERNATIONAL HOCKEY LEAGUE (U.S. Registration Nos. 2327539 and 2327541). The acronym that comprises the applicant’s mark is the acronym for the wording INTERNATIONAL HOCKEY LEAGUE (U.S. Registration No. 2327540), and in the context of the services, gives the appearance of being a related mark. See the attached reference from an online dictionary captured September 5, 2006 showing the acronym IHL, and the meaning likely to be attached to the acronym in the context of hockey.
The examiner notes that the registrant's marks U.S. Registration Nos. 2327539 and 2327541 contain a design element. When a mark consists of a word portion and a design portion, 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. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976). For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.
The registrant’s marks are for use in connection with “entertainment services, namely, organizing and conducting professional sporting events in the form of ice hockey games and exhibitions,” and related promotional goods, namely “printed materials, namely, souvenir programs concerning ice hockey, booklets in the field of hockey, and printed schedules for ice hockey games and books in the field of ice hockey,” “clothing, namely, t-shirts, sweatshirts, jackets, sweat pants, shorts, hats and boxer shorts,” “toys and sporting goods, namely, hockey pucks, hockey sticks, and masks for use in playing hockey,” and “sports bottles sold empty” (only in U.S. Registration Nos. 2327538, 2327539, and 2327540). The applicant proposes using the mark in connection with “entertainment services; namely, organizing and conducting professional sporting events in the form of hockey games and exhibitions.” The services provided by the registrant are presumed to include those provided by the applicant, as the applicant’s services are not specifically described as to the kind of hockey. Even if the services of the parties were for different hockey sports, the use of the marks incorporating IHL (or with the wording for which the acronym stands), in full or in part, in connection with hockey exhibitions and promotional goods provided therewith would lead consumers to believe that the services and related goods emanate from a common source.
Overall, the similarities among the marks and the services and related goods are so great as to create a likelihood of confusion. 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).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The recitation of services is unacceptable as indefinite because the applicant’s entertainment services are not described unless the applicant intends the wording that follows to describe the services, in which case, the semicolon following “entertainment” must be changed to a comma for clarity. TMEP section 1402.11. The applicant may adopt the following recitation, if accurate:
Entertainment services, namely, organizing and conducting professional sporting events in the form of hockey games and exhibitions, in IC 041.
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.
For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the world wide web at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.
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.
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.
/Linda A. Powell/
Trademark Examining Attorney
Law Office 117
(571) 272-9327
HOW TO RESPOND TO THIS OFFICE ACTION:
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.