Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

 

ISSUE/MAILING DATE:

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SUMMARY OF ISSUES

 

In response to this Office action, applicant must address the following issues:

 

(1)      Section 2(d) Likelihood of Confusion Refusal;

 

(2)      Identification of Goods Requirement; and

 

(3)      Significance of the Mark Requirement.

 

 

SECTION 2(D) – LIKELIHOOD OF CONFUSION REFUSAL – SPECIFIC GOODS ONLY – PARTIAL REFUSAL

 

Registration of the applied-for mark is refused, for “downloadable electronic publications” only, because of a likelihood of confusion with the marks in U.S. Registration Nos. 1804423 and 3330639.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See Attachment 1 – the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks and similarity of the goods.  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.

 

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

Here, applicant’s mark, WIZARD, is confusingly similar to the registered marks, WIZARD and WIZARD, respectively.  All of the marks consist entirely of the term WIZARD. As a result, the marks are similar in sound, appearance, meaning and overall commercial impression.

 

Ultimately, when purchasers call for the goods of applicant and registrants, they are likely to be confused as to the sources of the goods by the similarities between the marks. Thus, the marks are confusingly similar.

 

 

Relatedness of the Goods

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Here, applicant’s “downloadable electronic publications” are closely related to registrants’ “printed publications; namely, a magazine featuring information about comic books” and “children's books, coloring books”, respectively. Applicant has failed to specify the types of publications or their subject matter. In a likelihood of confusion analysis, the comparison of the parties’ goods is based on the goods as they are identified in the application and registration, without limitations or restrictions that are not reflected therein.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii). 

 

In this case, applicant’s goods are identified broadly.  Therefore, it is presumed that the application encompasses all goods of the type described, including those in the registrants’ more specific identifications, that the goods move in all normal channels of trade, and that they are available to all potential customers.  See In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii).

 

In fact, purchasers are accustomed to encountering downloadable and printed publications offered under the same trademark. See, e.g., Attachment 2 – third party Registration No. 2937040, 3155036, 3191964, 3195342, 3403393, 3403429, 3474088, 3562634, 3687502 and 3707008, featuring goods similar to those identified in the application and registrations. This evidence establishes that the goods listed therein are of a kind that may emanate from a single source.  In re Infinity Broad. Corp. of Dallas,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

Ultimately, when purchaser encounter the publications of applicant and registrants, they are likely to be confused as to the sources of the goods by the obvious overlap and clear association between them. Thus, the goods are closely related.

 

Therefore, because the marks are confusingly similar and the goods are identical, purchasers encountering these goods are likely to mistakenly believe that they are provided by a common source.  Accordingly, registration is refused, for  downloadable electronic publications” only, pursuant to Section 2(d) of the Trademark Act.

 

 

Response to Section 2(d) – Likelihood of Confusion Refusal

 

The stated refusal refers to the following goods and does not bar registration for the other goods:  “downloadable electronic publications”. Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)        Deleting the goods to which the refusal pertains; or

 

(2)        Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

 

REQUIREMENTS

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements:

 

 

IDENTIFICATION OF GOODS INDEFINITE – AMENDMENT REQUIRED

 

The wording “downloadable electronic publications” in the identification of goods is indefinite and must be clarified because applicant must specify the types of publications and their subject matter.  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate: 

 

Class 09  –

“Electronic book readers; mobile phones; smart phones; electronic dictionaries; personal digital assistants; notebook computers; downloadable electronic publications, namely, [applicant to specify types of publications and subject matter, i.e., magazines and books in the field of accounting, etc.].”

TMEP §1402.01.

 

 

Additions to Identification Not Permitted

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

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.

 

 

SIGNIFICANCE OF MARK REQUIRED

 

Applicant must explain whether “WIZARD” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

 

RESPONDING TO THIS OFFICE ACTION

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

 

/Myriah A. Habeeb/

Myriah A. Habeeb

Trademark Examining Attorney

Law Office 105

Phone: 571.272.8909

Informal Email: Myriah.Habeeb@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.