UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/674248
MARK: NO LIMIT
|
|
|
CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
|
|
APPLICANT: NO LIMIT FIGHTING
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The assigned examining attorney has reviewed the referenced application and determined the following.
PRIOR PENDING APPLICATION
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial nos. 78875995 and 78914976. There may be a likelihood of confusion between the applicant’s mark and the marks noted above under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier filed applications mature into registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP §§1207.01 et seq..
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
Applicant seeks to register the mark “NO LIMIT” and design. The prior pending applications are for the marks “NO LIMITS.” The marks are highly similar in spelling, appearance and pronunciation.
Applicant’s goods are described as “Management services for mixed-martial arts fighters.” Application Serial No. 78875995 and 78914976 are for “franchise services, namely, offering technical and business management assistance in the establishment and operation of operating of martial arts schools and health club services; operating of martial arts schools; martial arts instruction; health club services, namely, providing instruction and equipment in the field of physical exercise; arranging and conducting athletic competitions; entertainment in the nature of competitions in the field of martial arts and mixed martial arts; entertainment, namely live stage shows and performances featuring sports and mixed martial arts; entertainment in the nature of theater productions; entertainment services, namely development, organization and production of competitions, performances and events featuring sports, fitness, martial arts, and mixed martial arts; educational services, namely providing instructional seminars in sports, fitness, martial arts, and mixed martial arts; educational services namely conducting programs in the field of sports, fitness, martial arts, and mixed martial arts; and providing information in the fields of sports, physical fitness, martial arts, and mixed martial arts.” These services are highly similar and thus, are of a type that could be expected to come from the same source.
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue. The election to file or not to file a response to this issue at this time in no way limits the applicant’s right to address this issue at a later point. However, the applicant must respond to the following informalities in a timely manner.
Applicant must specify the names and the national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation of the general partners, as appropriate. 37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.
The application was not signed and verified, which are application requirements. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34. Therefore, applicant must verify, in an affidavit or signed declaration under 37 C.F.R. §2.20, the facts set forth in the application.
If the application is based on an intent to use the mark in commerce under Trademark Act Section 1(b) or based on a foreign registration under Section 44, the verified statement must include the following allegation: “Applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §§1051(b)(3)(B), 1126(d) and (e); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b)-(d).
The application was not signed and verified, which are application requirements. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34. Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §2.20, the following statement: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date, and the facts set forth in the application are true and correct.” 37 C.F.R. §2.193(c)(1)(iii); TMEP §804.02.
If applicant responds to this Office action via TEAS, applicant may satisfy this requirement by adding the required statement (specified immediately above) to the TEAS response form, checking the box for a “signed declaration,” and properly signing the form by either (1) choosing an electronic signature consisting of any combination of letters, numbers, spaces and/or punctuation marks, preceded and followed by the forward slash (/) symbol (e.g., /johndoe/), and entering this in the signature block on the response form, or (2) attaching a JPG or PDF image of a declaration under 37 C.F.R. §2.20 (see declaration paragraph below) together with a pen-and-ink signature. TMEP §804.05.
If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following declaration at the end of the response, properly signed and dated:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use such mark in commerce; that applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
/Caroline E. Wood/
Trademark Examining Attorney
Law Office 110
(571) 272-9243
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.