UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 6/30/2009

 

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

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3081076, 3276187, 3310829, and 3567022.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See 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 and/or services 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, 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.

 

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).

 

The goods and/or services 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, they need only be related in some manner, 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 and/or services 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).

 

The applicant has requested registration of the mark CHAMPIONS and Design, for “Printed instructional, educational, and teaching materials, namely, course books, lesson plans, work books, and teaching activity guides; printed materials, namely, newsletters, magazines, prints, posters, calendars, books, flash cards, note cards, writing pads, award certificates, and postcards; pencils and pens”; “Educational services, namely providing courses of instruction and programs, online courses of instruction and programs, supervised homework, extracurricular activities, and before and after school educational programs at the preschool, kindergarten, elementary and middle school levels in the areas of reading, writing, history, science, math, music, sports, and art; administering summer camps and recreational camps”; “Child care services; before and after school extended day care services.”

The registrants’ marks are (1) CHAMPIONS and Design, for “Education services, namely, providing after-school enrichment in the form of classes in the arts, homework help, athletic programs, and outdoor education activities including hiking, camping, mountain biking, kayaking, rock climbing, teambuilding and orienteering”;   (2) CHAMPIONS ACADEMY, for “Conducting workshops and seminars in basketball skills; Training services in the field of basketball skills”; (3) CHAMPIONS and Design, for “Pre-recorded audio video tapes, audio cassettes and DVD's featuring instruction and information on the fields of health, exercise, nutrition, sports, diet, sport fashion and lifestyle”; and (4)CHAMPIONS, for “Printed educational curricula materials sold to professionals in the field of education, namely, lesson plan books and wall charts designed for and used specifically in special needs classrooms for students with mental disabilities, to teach children with special needs the life skills they need to achieve self sufficiency.”

 

COMPARISON OF MARKS

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii).

In the present case, applicant’s mark is confusingly similar to the registered marks because its mark encompasses similar terms as the registrants’ mark, namely, CHAMPIONS.

 

COMPARISON OF GOODS AND SERVICES

Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, the applicant’s goods and services are  identical and/or closely related to the registrants’ goods and services because applicant specifies the goods and services overly broad (the subject matter of the printed matter is not specified, and the educational services encompasses a variety of areas/fields) so that they may encompass the specific fields, subject matter, and/or areas in which the registrants provide their printed and  pre-recorded goods, and educational services (classes and workshops).

 

Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers.  See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).

 

Thus, in view of the relatedness of the marks and the goods and services, there is a strong likelihood that consumers would perceive that the goods and services emanate from a common source. 

In view of the above circumstances, the examining attorney must resolve any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

Thus, the mark is refused registration on the Principal Register under Section 2(d).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal(s) to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the below listed informalities.

 

INFORMALITIES 

1.   IDENTIFICATION OF GOODS  IN CLASS 16 IS INDEFINITE AND REQUIRES CLARIFICATION:

The identification of goods needs clarification because applicant does not specify the field and/or subject matter of the  Printed instructional, educational, and teaching materials.  See TMEP §§1402.01, 1402.03.

 

Applicant must clarify the identification of goods, and may adopt the following suggestion:

 

CLASS 16

“Printed instructional, educational, and teaching materials, namely, course books, lesson plans, work books, and teaching activity guides in the field of {indicate subject matter}; printed materials, namely, newsletters, magazines, and books in the field of {indicate subject matter}, prints, posters, calendars,  flash cards, note cards, writing pads, award certificates, and postcards; pencils and pens.”

CLASS 41

The Classification of services is acceptable as provided.

 

CLASS 45

The Classification of services is acceptable as provided.

 

See TMEP §1402.01.

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

 

2.  APPLICATION NOT ENTITLED TO REGISTER-EARLIED-FILED PENDING APPLICATIONS

Information regarding pending Application Serial Nos. 78750792, 77172271, 77346783, and 77635669 are enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks.  If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

 

 

 

 

/Darryl M. Spruill/

Trademark Attorney

Law Office 112

(571) 272-9418 (office)

(571) 273-9418 (fax)

darryl.spruill@uspto.gov

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/30/2009 FOR

APPLICATION SERIAL NO. 77713157

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77713157&doc_type=OOA&mail_date=20090630 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/30/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.