UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

This Office action supersedes the previous Office action issued February 8, 2007 in connection with this application.

 

Upon further review of the application, the examining attorney has determined the following.

 

Refusal – Section 2(d) – Likelihood of Confusion

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3022887.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant’s mark is SHOUT PR for “provision of publicity services, advertising and marketing services to third party business entities.”  The registered mark is USASHOUT for “electronic commerce services, namely, providing information regarding the goods and services of others in the nature of a buyers' guide; promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks; advertising, marketing, and promotion of websites for others; providing advertising and graphic, multi-media and interactive images through computer networks for use on personal home pages; providing business referrals in the field of real estate for brokers, appraisers, adjusters, and other real estate professionals; gift registry services, providing an online business-to-business marketplace where businesses can buy and sell excess inventory and idle assets, and online auction services; providing online retail, mail order, and auction business management; event ticket agency services; online directory services, providing online directories, indices, and searchable databases pertaining to e-mail communication and mailing lists; computerized database management; and public opinion polling concerning political issues, public affairs issues and public policy issues of regional, state-wide and national concern by means of a global computer network.”  The applicant’s mark is confusingly similar to the registered mark in that they are highly similar in appearance, sound, connotation and commercial impression.  

 

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.

 

Similarity of the Marks

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b). 

 

The applicant’s mark, SHOUT PR, is similar to the registered mark, USASHOUT, because the dominant feature of the applicant’s mark is identical to the dominant feature of the registered mark, namely the word SHOUT.  Although the marks are compared in their entireties under a Section 2(d) analysis, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).  It is noted that the registered mark contains the additional word “USA.”  However, this word is descriptive and the dominant portion of the mark is the word “SHOUT.”  Since the term SHOUT is very significant in creating a commercial impression, the marks are highly similar in sound, appearance, meaning and connotation. 

 

The applicant’s mark contains the additional wording “PR” however, this wording is descriptive and therefore must be disclaimed.  Disclaimed matter is typically less significant or less dominant when comparing marks.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).

 

Where the marks of the respective parties are identical or highly similar, then the commercial relationship between the goods or services of the respective parties must be analyzed carefully to determine whether there is a likelihood of confusion.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355 (TTAB 1983); TMEP §1207.01(a).

Relatedness of the Services

 

The services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).

 

The applicant has applied for services consisting of “provision of publicity services, advertising and marketing services to third party business entities,”  while the registered mark is for “electronic commerce services, namely, providing information regarding the goods and services of others in the nature of a buyers' guide; promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks; advertising, marketing, and promotion of websites for others; providing advertising and graphic, multi-media and interactive images through computer networks for use on personal home pages; providing business referrals in the field of real estate for brokers, appraisers, adjusters, and other real estate professionals; gift registry services, providing an online business-to-business marketplace where businesses can buy and sell excess inventory and idle assets, and online auction services; providing online retail, mail order, and auction business management; event ticket agency services; online directory services, providing online directories, indices, and searchable databases pertaining to e-mail communication and mailing lists; computerized database management; and public opinion polling concerning political issues, public affairs issues and public policy issues of regional, state-wide and national concern by means of a global computer network.” 

 

Both the applicant’s services and the registrant’s services include advertising and marketing services. The applicant provides “advertising and marketing services to third party entities” while the registrant’s services include, in part, “promoting the goods and services of other by placing advertisements and promotional displays in an electric site accessed through computer networks; advertising, marketing, and promotion of websites for others; providing advertising and graphic, multi-media and interactive images through computer networks for use on personal home pages.” Therefore, in addition to the nature of the marks, the parties’ services are highly related. 

 

Since the marks are confusingly similar, and the services are highly related, it is likely purchasers would confuse the source of the services.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).  Accordingly, the mark is refused registration under Section 2(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.

 

/Jessica Ellinger Fathy/

Jessica Ellinger Fathy

Trademark Examining Attorney

Law Office 110

Phone: (571) 272-6582

Email: Jessica.Fathy@uspto.gov

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.