To: | Knowledge Learning Corporation (sschwartz@cozen.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77713157 - CHAMPIONS - KLC-0650/233 |
Sent: | 10/26/2011 3:47:17 PM |
Sent As: | ECOM112@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 77713157
MARK: CHAMPIONS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Knowledge Learning Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 10/26/2011
Examining attorney issued a Suspension Office Action based on the citation of prior-pending - Application Serial Nos. 77172271 and 77635669. Also, the refusal for registration was maintained and continued under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 3081076, 3276187, 3310829, and 3567022, and the identification of services was deemed unacceptable.
Please note that the citation of prior-pending Application Serial No. 77635669 is withdrawn because the application has been abandoned.
Please note that on 3/1/11, Application Serial No. 77172271 respectively matured into registration. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Applicant’s mark is CHAMPIONS and Design, for “Printed instructional, educational, and teaching materials, namely, course books, lesson plans, work books, and teaching activity guides in the subjects of reading, writing, history, science, math, music, and art; printed materials, namely, newsletters, magazines, and books in the subjects of reading, writing, history, science, math, music, and art; prints, posters, calendars, 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, and art; administering summer camps and recreational camps.”
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”; (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”; and (5) LITTLE CHAMPIONS Standard Character, for “Physical education for children, namely, providing specialized workout programs and skills classes.”
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 they are goods and services (workshops, camps, programs, classes, printed matter, and pre-recorded media) for the education, instruction, and teaching of students and others in a variety of areas or subject matter, e.g., reading, writing, history, science, math, music, art, exercise, and sports.
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.
/Darryl M. Spruill/
Trademark Attorney
Law Office 112
(571) 272-9418 (office)
(571) 273-9418 (fax)
darryl.spruill@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 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 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.