To: | Schreff,David J. (bedare@aol.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77001086 - MEGA SPORTS - N/A |
Sent: | 9/27/2013 7:00:13 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 77001086
MARK: MEGA SPORTS
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CORRESPONDENT ADDRESS: 42 Stonebrook Lane |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 9/27/2013
THIS IS A FINAL ACTION.
On March 9, 2007, the present application was suspended pending the disposition of prior pending Application Serial Nos. 78978069, 78978058, 78978051 and 78795855.
On July 16, 2013, prior pending Application Serial No. 78978069 matured into Registration No. 4366333. Upon review of the marks and the goods in the present application and in Registration No. 4366333, it has been determined that there is no likelihood of confusion and any reference to a potential refusal is WITHDRAWN. Moreover, prior pending Application Serial Nos. 78978058, 78978051 and 78795855 have all been abandoned. Therefore, any reference to a potential refusal under Section 2(d) as to Application Serial Nos. 78978058, 78978051 and 78795855 is also WITHDRAWN as moot.
On November 19, 2010, cited Registration No, 2832687 was cancelled. Therefore the refusal under Section 2(d) as to Registration No. 2832687 is WITHDRAWN as moot.
The examining attorney has reviewed the applicant’s February 14, 2007 arguments against the refusal under Section 2(d) with regard to Registration No. 1547384 and finds them unpersuasive.
Final Refusal under Section 2(d) – Likelihood of Confusion
The applicant has applied to register the mark MEGA SPORTS for “athletic sporting goods, namely, athletic wrist and joint supports; bags specially adapted for sports equipment; ball cages; ball pitching machines; balls of all kinds; baseball bases; baseball bats; baseballs; basket balls; beach balls; bocce balls; bowling balls; cricket balls; field hockey balls; foot balls; golf balls; hand balls; lacrosse balls; needles for pumps for inflating sports equipment; net balls; paddle ball games; paddle balls; petanque balls; platform tennis balls; playground balls; pumps for inflating sports equipment, namely, basketballs, volleyballs, footballs, rubberballs; punching balls; racket balls; racquet balls; rubber action balls; rubber balls; rubber baseballs; rugby balls; soccer balls; soft tennis balls; sport balls; sporting goods and equipment for speed training, namely, rings, cones, speed ladders, coaching sticks, training arches, ankle bands, resistance chutes, hurdles; sports field equipment, namely, corner flags; squash balls; table tennis balls; tennis balls; tether balls; volley balls.” Registration No. 1547384 is for the mark MEGA for “hockey skates” (note that the other goods previously listed as being part of Registration No. 1547384 have since been deleted by the registrant and a second copy of the cited registration is attached hereto.
As indicated in the prior Office action, in any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Similarities of the Marks
The applicant has merely added (and disclaimed) the descriptive word SPORTS to the registered mark. The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii).
Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
The applicant argues that the term MEGA is weak and thus entitled to a narrow scope of protection. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974). This protection extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978); In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975).
Moreover, in support of applicant’s argument that the word MEGA is weak, the applicant has submitted a list several third party registrations and applications (all abandoned or cancelled). However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d, 1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.
Relatedness of the Goods
The applicant’s sporting goods and the registrant’s hockey skates are very highly related. The attached Internet evidence consists of excerpts from www.ebay.com; www.google.com; www.nike.com; www.hockeygiant.com and www.reebok.com. This evidence establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Conclusion
The marks share the identical wording MEGA with the applicant merely adding the highly descriptive word SPORTS. The goods are related sporting equipment that are sold in the same channels of trade. The similarities of the marks and the goods are so great as to create a likelihood of confusion. Therefore, the reasons stated, the refusal under Section 2(d) as to Registration No. 1547384 is MAINTAINED and made FINAL.
Proper Response to Final Refusal
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
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).
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Where an applicant is initially represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
Where an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
/Julie Watson/
Trademark Examining Attorney
Law Office 109
(571) 272-9236
julie.watson@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.