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:

 

The assigned examining attorney reviewed the referenced application and determined the following:

 

Section 2(d) Likelihood of Confusion Refusal

 

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 and services, so resembles the marks in U.S. Registration No. 2760140 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 and 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.

 

The applicant’s mark is MYSTUDIO and design, and the registrant’s mark is MYSOUNDSTUDIO.  The marks are highly similar in sound, appearance, meaning, connotation and commercial impression.  The only difference between the applicant’s and registrant’s marks is the highly descriptive wording SOUND.  Sound studios are a feature of both the applicant’s and the registrant’s goods and services.   

 

The applicant’s services, including creating sound recordings, studio to record artistic performances; portable studio to record artistic performances including singing, recitations, modeling, and acting at retail shopping centers, airports, and university campuses; public booth to record performances, are highly related to Registrant’s computer software for sound recording and editing.  Further, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion).

 

Because the marks are highly similar in sound, appearance, connotation and commercial impression and because the goods and services are highly related, registration is refused.  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. 

 

Prior Pending Application

 

The examining attorney encloses information regarding pending Application Serial No. 77216204.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.  Therefore, upon entry of a response to the Office Action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, then the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.  The applicant, however, must respond to the following requirements.

 

Recitation of Services

 

The wording specified below in the recitation of services is indefinite because it must further specify the services and/or too broad because it could include services classified in other international classes.  TMEP §§1402.01 and 1402.03. 

 

It is unknown what is meant by “collecting… artistic performances” or “collecting artistic performances from a plurality of remote recording studios.”  Thus, no suggestion is made below.  The applicant is strongly encouraged to use the online searchable Manual of Acceptable Identifications of Goods and Services.

 

Distribution is the activity of moving goods from one place to another.  That is a transportation service in International Class 39 and not in International Class 35 with other services in the retail chain.

 

The applicant may adopt the following recitation of services, if accurate: 

 

Promotion of sound recordings for others; publicity agents, namely, promotion of musical performers for others; providing an on-line computerized database in the field of a job placement agency; providing a web site which features advertisements for the goods and services of others on a global computer network; rental of advertising space for goods and services of others on internet web sites and in recording studios; advertising agency services; advertising agency services including preparing and arranging for distribution of advertisements; advertising agency services including arranging for advertising on a [specify type of network] network including internet web sites and recording studios; in International Class 35

 

Providing network access to electronic sites featuring artistic performances; electronic transmission of artistic performances; providing a public booth for providing remote internet access to on-line computerized databases in the fields of job placement agencies and agencies that promote personal relationships; [specify type, e.g., television, radio] broadcasting, namely, providing a [specify type, e.g., television, radio] network on which companies can advertise products and services; providing electronic transmission of artistic performances via the internet; in International Class 38

 

Electronic storage of artistic performances; providing a web site for electronic storage of artistic performances; in International Class 39

 

Providing [specify type, e.g., recording] studio for transmitting artistic performances; providing [specify type, e.g., recording] studio to record artistic performances; providing portable [specify type, e.g., recording] studio to record artistic performances including singing, recitations, modeling, and acting at retail shopping centers, airports, and university campuses; entertainment services, namely, conducting talent contests; providing talent contest information via a global computer network; entertainment services, namely, judging artistic performances at talent contests; providing a recording studio in the nature of a public booth to record performances; entertainment services, namely, providing a web site featuring musical performances; production of sound recordings; in International Class 41

 

Online social networking services, namely, providing an internet website to promote personal relationships including arranging introductions between individuals and including social interactions; providing an on-line computerized database in the field of an agency that promotes personal relationships; in International Class 45

 

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

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. 

 

Multi-Class Application

 

The application identifies services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to one class, which is the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

If the applicant submits the outstanding fees with a paper response, then the applicant must submit $375 for each additional class.  However, if the applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then the applicant must submit $325 for each additional class.  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

If the applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned examining attorney at the number below.

 

 

/LeighLowry/

Leigh A. Lowry

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 115

(571) 272-9725

 

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 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.