UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/688968
MARK: ITV
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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
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APPLICANT: Skokos, Theodore C.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
PLEASE NOTE: THIS IS A CORRECTIVE OFFICE ACTION. PLEASE DISREGARD THE PREVIOUS OFFICE ACTION SENT, AS IT DOES NOT INCLUDE ALL ISSUES.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF THE MARKS
In the present case, applicant’s mark iTV is identical to the literal portion of registrant’s mark iTV. The fact that the registrant’s mark is a design which shows the letter “i” in between the letters “T” and “V” is not signification because consumers would likely read the mark as iTV not TiV because the letter “i” appears larger and more dominant. The fact that registrant’s mark has a design element of the letters enclosed in a shaded circle is also not significant when comparing the two marks. 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 and/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, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). Overall, the marks have the same commercial impression.
COMPARISON OF THE GOODS/SERVICES
Applicant’s “portable, handheld cellular television receiving devices” are related to the registrant’s “interactive television transmission services” because television equipment and services are frequently sold by the same outlets. 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. TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream). Accordingly, the goods/services would likely be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods/services originate from the same source.
See U.S. Registrations Nos. 2715585; 3007648; 3275984; and 3440594.
Since the marks are similar and the goods/services are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL- MERELY DESCRIPTIVE
Applicant’s mark “iTV” is descriptive for applicant’s services “portable, handheld cellular television receiving devices.” The letter “i” or “I” used as a prefix would be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services. Therefore, when this prefix is coupled with a descriptive word or term for Internet-related goods and/or services, then the entire mark is merely descriptive under Trademark Act Section 2(e)(1). See In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others); TMEP §1209.03(d). The term “TV” is descriptive of applicant’s goods because “TV” is an abbreviation for the term “television.” Please see the attached dictionary definition. Therefore the mark “iTV” is merely descriptive for a television that uses the Internet in some capacity.
The applicant’s mark “iTV” is merely descriptive of applicant’s goods. For the aforementioned reasons, the mark is refused registration under Section 2(e)(1).
Additionally, applicant must respond to the requirement(s) set forth below.
Applicant must submit more information regarding the goods to permit proper examination of the application. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). Specifically applicant must indicate whether the goods use the Internet in any capacity.
STANDARD CHARACTER CLAIM REQUIRED
IDENTIFICATION OF GOODS
Applicant may adopt the following identification, if accurate:
Class 9: “portable, handheld cellular television receivers”
For assistance with identifying and classifying 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. See TMEP §1402.04.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
/Courtney McCormick/
Examining Attorney
Law Office 108
Office: (571) 272-2907
Fax: (571) 273-9108
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.