To: | Educational Adventures, LLC (ebehm@gibbonslaw.com) |
Subject: | TRADEMARK APPLICATION NO. 77200773 - ZOONIVERCITY - 107466.59527 |
Sent: | 9/14/2007 4:33:59 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/200773
MARK: ZOONIVERCITY
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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: Educational Adventures, LLC
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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.
ISSUE/MAILING DATE: 9/14/2007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
2(d) LIKELIHOOD OF CONFUSION REFUSAL
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2591762. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
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 in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). 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 Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.
Applicant’s mark is ZOONIVERCITY for Pre-recorded video disks, cassettes, and tapes featuring educational programming for children, for children's books, magazines for children, coloring books, and comic books and for entertainment services, namely, entertainment services in the nature of a television series featuring children's entertainment, live performances featuring costumed characters for the entertainment of children, and providing a website featuring episodes of a children's entertainment program, related video clips and information relating to online entertainment. Registrant’s mark is ZOONIVERSITY, U.S. Registration No. 2591762 for educational services, namely conducting programs in the field of zoology which is the branch of biology that deals with animals and animal life, including the study of the structure, development, and classification of animals.
In this case the marks are essentially phonetic equivalents and are thus similar sounding. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).
With respect to the goods, they are similar if not identical in that they are both in the educational field and applicant’s identification is broad enough as to also include the field covered by the registrant’s mark. The goods and services are likely to travel through the same channels of trade and are likely to be found by the same consumers. Those consumers when coming across the goods and services are likely to be confused as to the source of origin of the goods and services and are likely to believe that they derive from the same source. Therefore, likelihood of confusion may occur.
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
For the reasons stated above, registration is refused under section 2(d) of the Trademark Act. The examining attorney attaches a copy of the cited registration for your review and consideration.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of the registration.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone or e-mail the assigned examining attorney.
F Blandu
/fblandu/
l.o.117
tel. (571) 272-9128
fax (571) 273-9128
e-mail (for informal communications only) florentina.blandu@uspto.gov
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 Office’s Response to Office action 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.