| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 77010844 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In Re Application of:
Applicant: Comcast SportsNet Philadelphia, L.P. Examiner: Zachary R. Bello
Serial No.: 77/010844 Law Office: 111
For: CSN
Box RESPONSES NO FEE Assistant Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451 RESPONSE
This communication is responsive to the Office Action dated February 17, 2007. Remarks The Examining Attorney has refused registration based upon a finding that there is a likelihood of confusion between Applicant’s mark, and the marks in U.S. Trademark Registration No. 2807441 and Registration No. 2535138. In view of the following remarks, Applicant respectfully submits that there is no likelihood of confusion and the refusal to register can be removed.
THERE IS NO LIKELIHOOD OF CONFUSION AS BETWEEN APPLICANT’S MARK AND THOSE FOUND IN THE CITED REGISTRATIONS The Examining Attorney refuses registration under Trademark Act Section 2(d) because the Examining Attorney believes Applicant's mark is likely to be confused with the marks found in U.S. Trademark Registration No. 2807441 and Registration No. 2535138. In light of the different services associated with the respective marks, the clear ability for different “CSN” marks to co-exist with each other, and sophistication of consumers involved, Applicant respectfully submits there is no likelihood of confusion and the refusal to register can be withdrawn. 1. There is No Likelihood of Confusion Due to the Differences In The Services Associated With the Respective Marks Here, the significant differences in the services associated with Applicant’s mark and the services in the cited registrations make confusion unlikely to occur. In determining relatedness of the services associated with the marks, one must assess whether consumers would believe they emanated from a like source. See Homeowners Group Inc. v. Home Marketing Specialists Inc., 18 U.S.P.Q.2d 1587, 1594 (6th Cir. 1991) (holding that "relatedness exists where goods and services are similar enough that a consumer could ‘easily assume’ that they were offered by the same source”). Consumers here simply would not expect that the services associated with Applicant’s mark would be provided by the Registrants nor that Registrants would provide the services provided by Applicant. As seen, marks for services far more similar to each other than those involved here have been found not to be confusingly similar. In McGraw-Hill Inc. v. Comstock Partners Inc., 17 U.S.P.Q.2d 1599, 1602 (S.D.N.Y. 1990), both parties used the term "COMSTOCK" with the plaintiff denoting its service linking a customer to a commodity and stock exchange database. Defendant used the mark for investment advisory services. Addressing competitive proximity, the court stated: ComStock and the defendants, while they furnish products related to the broad field of finance, are as completely unrelated as night and day.... ComStock is in the business of leasing access time to a computer data base. Defendants are money managers for multi‑million dollar operations. Comstock Partners Strategy Fund, Inc., a closed end mutual investment fund of over $1 billion, is not remotely similar to the ComStock product line.
In the above case, the mark was identical, or nearly so, and the services could be generally characterized as falling within a related class of services. Yet, the differences between the services resulted in the recognition that confusion was unlikely. The differences between Applicant's services and those services used with the cited registrations are much more pronounced than are the differences between the services in the case cited above. This fact argues strongly against finding a likelihood of confusion between Applicant's mark and the Registrants’ marks. In sum, the Applicant’ s services are so unrelated to the services in the cited registrations that confusion is unlikely. See, e.g., Windsor, Inc. v. Intravco Travel Cntrs.,799 F.Supp. 1513, 1523 (S.D.N.Y. 1992) (no likelihood of confusion because “although the parties are both engaged in the travel business, their services are quite different from one another.”) Under the Trademark Act, a refusal to register a mark grounded in likelihood of confusion requires that such confusion as to the source of the goods be not merely possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Massey-Ferguson Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983) (quoting Witco Chemical Co. v. Whitfield Chemical Co., Inc., 164 U.S.P.Q. 43, 44 (C.C.P.A. 1969)): We are not concerned with mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which trademark laws deal. Moreover, mere similarity or even identity between marks can never alone be decisive of likelihood of confusion. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979). Thus, in holding the mark "DRIZZLE" for women's overcoats was not likely to cause confusion with "DRIZZLER" for golf jackets, the Court of Appeals for the Second Circuit stated: First, even close similarity between two marks is not dispositive of the issue of likelihood of confusion. "Similarity in and of itself is not the acid test. Whether the similarity is likely to provoke confusion is the crucial question.” (Citation omitted.) McGregor-Doniger, 202 U.S.P.Q. at 89. See In re Norfolk Wallpaper, Inc., 216 U.S.P.Q. 903 (T.T.A.B. 1983) ("THE NORFOLK PLAN" for installation of wallpaper and retail wallpaper store services does not so resemble "NORFOLK" for interior and exterior ready-made paint and varnishes, and thinners for pain and varnishes that confusion is likely); Inter‑state Brands Corp. v. Celestial Seasonings, Inc., 198 U.S.P.Q. 151 (C.C.P.A. 1978) ("RED ZINGER" for herb tea not likely to cause confusion with "ZINGERS" for cakes); In re Texas Instruments, Inc., 193 U.S.P.Q. 678 (T.T.A.B. 1976) (no likelihood of confusion between "COPPER CLAD" for copper-coated carbon electrodes for electric arc cutting and gouging and "COPPERCLAD & Design" for composite metal wire for use in electric conductors); In re Vogue Tyre & Rubber Co., 176 U.S.P.Q. 189 (T.T.A.B. 1972) (no confusing similarity between "CUSTOM BUILT & Design" for goods including storage batteries and "CUSTOM BUILT" for tires); and Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) ("PEAK PERIOD" for personal deodorant does not so resemble "PEAK" for a dentifrice that confusion is likely). Services Used with the Subject Mark, Serial No. 77/010844, for CSN Applicant's CSN mark is used in connection with television broadcasting services in International Class 38 and entertainment services, namely, production of a series of sports-related television programs in International Class 41. Applicant’s has a sports-related television program. It is marketed to sports enthusiast. It covers various sporting events, and has shows all relating to covering sports and analyzing various sporting events. It has nothing to do with offering products for purchase. Services in Registration No. 2535138 for CSN and Design The CSN and Design, in Registration No. 2535138, is for “entertainment in the nature of on-going television programs featuring celebrity hosts and others describing products for sale.” Applicant’s mark is used in connection with a show featuring only sporting events and sport-related topics. In stark contrast, Registrant’s mark is used for a television program featuring celebrity hosts describing different products for sale. Consumers watch the shopping program if they are interested in purchasing products for sale. It does not involve sports, and is clearly not geared to a sports fan base. Rather, it is geared to shoppers. The topics are wholly unrelated. Clearly, consumers would not associate Applicant’s sports show with Registrant’s products for sale show, not involving sports. These significant real life distinctions obviate a finding of likelihood of confusion such that the refusal to register can be withdrawn. Services in Cited Registration No. 2807441 for CSN CABLE SHOPPING NETWORK The CSN CABLE SHOPPING NETWORK mark found in cited
Registration No. 2807441 is for “cable television shopping show.” Such shopping program is wholly unrelated to Applicant’s sports program offered in connection with
Applicant’s mark, and for all the reasons set forth above for the other cited registration, these significant real life distinctions obviate a finding of likelihood of confusion such that the refusal
to register can be withdrawn. 2. The CSN Marks in the Cited Registrations Already Co-exist With Each Other and Other CSN Registrations Offering Entertainment Programs
A cursory review of the records of the U.S. Patent and Trademark Office discloses other marks incorporating the term “CSN” that have already been registered on the Principal Register. For example, we have attached a copy of Registration No. 2542019 for CSN for radio programming services for children. If this registration can co-exist with the cited registrations, Applicant’s CSN mark should also be able to co-exist without any likelihood of confusion. These CSN registrations clearly demonstrate that consumers are accustomed to differentiating between different “CSN” marks for various entertainment related shows such that consumers have learned to readily distinguish between these marks through small differences in the marks themselves and the associated entertainment services. Applicant submits these other marks demonstrate the narrow scope of protection afforded to the cited registrations; i.e., the relative ability to which any ensuing registration can exclude others from using marks that incorporate the term “CSN.” It is noteworthy that the cited CSN registrations belong to different owners. Interestingly enough, both such owners offer television programs related to shopping and purchasing products. Thus, the cited registrations are targeted toward related consumer groups, in overlapping channels of trade, and for similar services. Nonetheless, the cited registrations are able to peacefully co-exist in the marketplace. If consumers are able to distinguish between the marks in the cited registrations, then certainly consumers are not likely to be confused with Applicant’s use. Applicant respectfully submits that there is no likelihood of confusion and the refusal to register can be removed. 3. There is No Confusion Due to the High Degree of Care Used in Procuring the Associated Goods and Services. Here the entertainment services associated with Applicant’s mark and the entertainment services associated with the marks in the cited registrations are of the type for which the relevant consumers will use a high degree of care before purchasing or otherwise viewing. Television programs featuring products for sale, are the classic examples of the type of services for which consumers use a high degree of care. As stated in the Trademark Manual of Examining Procedure: The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). However, circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. Trademark Manual of Examining Procedure, § 1207.01(d)(vii) (emphasis added). It is unquestionable that consumers who seek to purchase products through either of the cited registrants’ services, will endeavor to fully understand the source of those products before purchasing them. That same high level of care would of course be used by the relevant consumers here and these circumstances do suggest that the possibility of confusion between Applicant’s mark and the marks in the cited registration and applications is highly unlikely. As such, the refusal to register based upon a finding of likelihood of confusion may be withdrawn. Conclusion In light of the wholly unrelated services associated with Applicant’s sports-focused show and the respective shopping shows offered under the cited registrations, the clear ability for different “CSN” marks to co-exist with each other, and sophistication of consumers involved, Applicant respectfully submits there is no likelihood of confusion and the refusal to register can be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_12104104106-123654802_._CSN.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT13\770\108 \77010844\xml1\ROA0002.JP G |
| DESCRIPTION OF EVIDENCE FILE | A printout of a third pary registration for CSN |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Camille M. Miller/ |
| SIGNATORY'S NAME | Camille M. Miller |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 05/15/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 15 12:40:20 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20070515124020988172-7701 0844-3703de0ddf24a12d97fc e21652b9f834469-N/A-N/A-2 0070515123654802475 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In Re Application of:
Applicant: Comcast SportsNet Philadelphia, L.P. Examiner: Zachary R. Bello
Serial No.: 77/010844 Law Office: 111
For: CSN
Box RESPONSES
NO FEE
Assistant Commissioner for Trademarks
P.O. Box 1451
Alexandria, Virginia 22313-1451
This communication is responsive to the Office Action dated February 17, 2007.
Remarks
The Examining Attorney has refused registration based upon a finding that there is a likelihood of confusion between Applicant’s mark, and the marks in U.S. Trademark Registration No. 2807441 and Registration No. 2535138. In view of the following remarks, Applicant respectfully submits that there is no likelihood of confusion and the refusal to register can be removed.
THERE IS NO LIKELIHOOD OF CONFUSION AS BETWEEN APPLICANT’S MARK AND THOSE FOUND IN THE CITED REGISTRATIONS
The Examining Attorney refuses registration under Trademark Act Section 2(d) because the Examining Attorney believes Applicant's mark is likely to be confused with the marks found in U.S. Trademark Registration No. 2807441 and Registration No. 2535138. In light of the different services associated with the respective marks, the clear ability for different “CSN” marks to co-exist with each other, and sophistication of consumers involved, Applicant respectfully submits there is no likelihood of confusion and the refusal to register can be withdrawn.
1. There is No Likelihood of Confusion Due to the Differences In The Services Associated With the Respective Marks
Here, the significant differences in the services associated with Applicant’s mark and the services in the cited registrations make confusion unlikely to occur. In determining relatedness of the services associated with the marks, one must assess whether consumers would believe they emanated from a like source. See Homeowners Group Inc. v. Home Marketing Specialists Inc., 18 U.S.P.Q.2d 1587, 1594 (6th Cir. 1991) (holding that "relatedness exists where goods and services are similar enough that a consumer could ‘easily assume’ that they were offered by the same source”). Consumers here simply would not expect that the services associated with Applicant’s mark would be provided by the Registrants nor that Registrants would provide the services provided by Applicant.
As seen, marks for services far more similar to each other than those involved here have been found not to be confusingly similar. In McGraw-Hill Inc. v. Comstock Partners Inc., 17 U.S.P.Q.2d 1599, 1602 (S.D.N.Y. 1990), both parties used the term "COMSTOCK" with the plaintiff denoting its service linking a customer to a commodity and stock exchange database. Defendant used the mark for investment advisory services. Addressing competitive proximity, the court stated:
ComStock and the defendants, while they furnish products related to the broad field of finance, are as completely unrelated as night and day.... ComStock is in the business of leasing access time to a computer data base. Defendants are money managers for multi‑million dollar operations. Comstock Partners Strategy Fund, Inc., a closed end mutual investment fund of over $1 billion, is not remotely similar to the ComStock product line.
In the above case, the mark was identical, or nearly so, and the services could be generally characterized as falling within a related class of services. Yet, the differences between the services resulted in the recognition that confusion was unlikely.
The differences between Applicant's services and those services used with the cited registrations are much more pronounced than are the differences between the services in the case cited above. This fact argues strongly against finding a likelihood of confusion between Applicant's mark and the Registrants’ marks. In sum, the Applicant’ s services are so unrelated to the services in the cited registrations that confusion is unlikely. See, e.g., Windsor, Inc. v. Intravco Travel Cntrs.,799 F.Supp. 1513, 1523 (S.D.N.Y. 1992) (no likelihood of confusion because “although the parties are both engaged in the travel business, their services are quite different from one another.”)
Under the Trademark Act, a refusal to register a mark grounded in likelihood of confusion requires that such confusion as to the source of the goods be not merely possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Massey-Ferguson Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983) (quoting Witco Chemical Co. v. Whitfield Chemical Co., Inc., 164 U.S.P.Q. 43, 44 (C.C.P.A. 1969)):
We are not concerned with mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which trademark laws deal.
Moreover, mere similarity or even identity between marks can never alone be decisive of likelihood of confusion. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979). Thus, in holding the mark "DRIZZLE" for women's overcoats was not likely to cause confusion with "DRIZZLER" for golf jackets, the Court of Appeals for the Second Circuit stated:
First, even close similarity between two marks is not dispositive of the issue of likelihood of confusion. "Similarity in and of itself is not the acid test. Whether the similarity is likely to provoke confusion is the crucial question.” (Citation omitted.) McGregor-Doniger, 202 U.S.P.Q. at 89.
See In re Norfolk Wallpaper, Inc., 216 U.S.P.Q. 903 (T.T.A.B. 1983) ("THE NORFOLK PLAN" for installation of wallpaper and retail wallpaper store services does not so resemble "NORFOLK" for interior and exterior ready-made paint and varnishes, and thinners for pain and varnishes that confusion is likely); Inter‑state Brands Corp. v. Celestial Seasonings, Inc., 198 U.S.P.Q. 151 (C.C.P.A. 1978) ("RED ZINGER" for herb tea not likely to cause confusion with "ZINGERS" for cakes); In re Texas Instruments, Inc., 193 U.S.P.Q. 678 (T.T.A.B. 1976) (no likelihood of confusion between "COPPER CLAD" for copper-coated carbon electrodes for electric arc cutting and gouging and "COPPERCLAD & Design" for composite metal wire for use in electric conductors); In re Vogue Tyre & Rubber Co., 176 U.S.P.Q. 189 (T.T.A.B. 1972) (no confusing similarity between "CUSTOM BUILT & Design" for goods including storage batteries and "CUSTOM BUILT" for tires); and Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) ("PEAK PERIOD" for personal deodorant does not so resemble "PEAK" for a dentifrice that confusion is likely).
Services Used with the Subject Mark, Serial No. 77/010844, for CSN
Applicant's CSN mark is used in connection with television broadcasting services in International Class 38 and entertainment services, namely, production of a series of sports-related television programs in International Class 41. Applicant’s has a sports-related television program. It is marketed to sports enthusiast. It covers various sporting events, and has shows all relating to covering sports and analyzing various sporting events. It has nothing to do with offering products for purchase.
Services in Registration No. 2535138 for CSN and Design
The CSN and Design, in Registration No. 2535138, is for “entertainment in the nature of on-going television programs featuring celebrity hosts and others describing products for sale.” Applicant’s mark is used in connection with a show featuring only sporting events and sport-related topics. In stark contrast, Registrant’s mark is used for a television program featuring celebrity hosts describing different products for sale. Consumers watch the shopping program if they are interested in purchasing products for sale. It does not involve sports, and is clearly not geared to a sports fan base. Rather, it is geared to shoppers. The topics are wholly unrelated.
Clearly, consumers would not associate Applicant’s sports show with Registrant’s products for sale show, not involving sports. These significant real life distinctions obviate a finding of likelihood of confusion such that the refusal to register can be withdrawn.
Services in Cited Registration No. 2807441 for CSN CABLE SHOPPING NETWORK
The CSN CABLE SHOPPING NETWORK mark found in cited
Registration No. 2807441 is for “cable television shopping show.” Such shopping program is wholly unrelated to Applicant’s sports program offered in connection with
Applicant’s mark, and for all the reasons set forth above for the other cited registration, these significant real life distinctions obviate a finding of likelihood of confusion such that the refusal
to register can be withdrawn.
A cursory review of the records of the U.S. Patent and Trademark Office discloses other marks incorporating the term “CSN” that have already been registered on the Principal Register. For example, we have attached a copy of Registration No. 2542019 for CSN for radio programming services for children. If this registration can co-exist with the cited registrations, Applicant’s CSN mark should also be able to co-exist without any likelihood of confusion.
These CSN registrations clearly demonstrate that consumers are accustomed to differentiating between different “CSN” marks for various entertainment related shows such that consumers have learned to readily distinguish between these marks through small differences in the marks themselves and the associated entertainment services. Applicant submits these other marks demonstrate the narrow scope of protection afforded to the cited registrations; i.e., the relative ability to which any ensuing registration can exclude others from using marks that incorporate the term “CSN.”
It is noteworthy that the cited CSN registrations belong to different owners. Interestingly enough, both such owners offer television programs related to shopping and purchasing products. Thus, the cited registrations are targeted toward related consumer groups, in overlapping channels of trade, and for similar services. Nonetheless, the cited registrations are able to peacefully co-exist in the marketplace. If consumers are able to distinguish between the marks in the cited registrations, then certainly consumers are not likely to be confused with Applicant’s use. Applicant respectfully submits that there is no likelihood of confusion and the refusal to register can be removed.
3. There is No Confusion Due to the High Degree of Care Used in Procuring the Associated Goods and Services.
Here the entertainment services associated with Applicant’s mark and the entertainment services associated with the marks in the cited registrations are of the type for which the relevant consumers will use a high degree of care before purchasing or otherwise viewing. Television programs featuring products for sale, are the classic examples of the type of services for which consumers use a high degree of care.
As stated in the Trademark Manual of Examining Procedure:
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). However, circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. Trademark Manual of Examining Procedure, § 1207.01(d)(vii) (emphasis added).
It is unquestionable that consumers who seek to purchase products through either of the cited registrants’ services, will endeavor to fully understand the source of those products before purchasing them. That same high level of care would of course be used by the relevant consumers here and these circumstances do suggest that the possibility of confusion between Applicant’s mark and the marks in the cited registration and applications is highly unlikely. As such, the refusal to register based upon a finding of likelihood of confusion may be withdrawn.
Conclusion
In light of the wholly unrelated services associated with Applicant’s sports-focused show and the
respective shopping shows offered under the cited registrations, the clear ability for different “CSN” marks to
co-exist with each other, and sophistication of consumers involved, Applicant respectfully submits there is no
likelihood of confusion and the refusal to register can be withdrawn.
