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: 7/8/2009

 

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

Section 2(d) Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3075086.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Similarity of Marks

 

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.  Applicant’s proposed mark is EXPLORE for series of pre-recorded electronic media, DVDs, compact discs, video discs, CD-ROMs, and digital video and audio files featuring entertainment and educational topics relating to history, culture, wildlife, nature, exploration and adventure; and production of television programs; production and distribution of cable television programs; entertainment services in the nature of an on-going television series featuring non-fiction content; entertainment services, namely, production, distribution and rental of motion picture films featuring non-fiction content, news and stories, music, comedy or drama; providing information via a global communications network in the fields of facts regarding science, natural history, natural science, geography, the environment, geology, anthropology, zoology, botany, social studies, history, world cultures, news and stories, games, video, television programs, and motion pictures.

 

The mark in the cited registration is EXPLORE for pre-recorded compact discs, and audio cassettes, sold to educators as part of a set pre-approved for classroom use in teaching in accordance with state approved curricula, all featuring language proficiency testing and instruction in language and speech; and printed instructional, educational and teaching materials sold to educators as a set pre-approved for classroom use in teaching in accordance with state approved curricula, namely, teachers' manuals, student workbooks, printed tests and wall charts, all pertaining to language proficiency testing and instruction in languages and speech.

 

Both marks are identical.

 

Relationship of Goods and Services

 

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).

 

Attached are copies of printouts retrieved from the USPTO X-Search database as representative samples which show third-party registrations of marks used in connection with similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source.  In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

Accordingly, because the marks are similar, and the goods/services are related, registration is refused under Section 2(d) of the Trademark Act.  Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant should also note the following potential refusal.

 

Pending Applications with Earlier Effective Filing Dates

 

Information regarding pending Application Serial Nos. 77232262 and 77232390 is enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced applications register, 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 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.

 

If applicant responds to the refusal noted above, applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Identification of Goods/Services

 

The identification of goods/services should set forth common names, using terminology that is generally understood.  Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.  TMEP §1402.01.

 

The examining attorney may require an amendment of the identification language to accurately describe the goods/services.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979).  For assistance with identifying and classifying goods/services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Specific wording in the identification of goods/services noted below is indefinite and must be clarified as indicated.  See TMEP §1402.01.  

 

“series of pre-recorded electronic media [wording “electronic media” is indefinite—identify goods by common commercial names], DVDs, compact discs, video discs, CD-ROMs, and digital video and audio files [wording “digital video and audio files” is indefinite—may place the term “downloadable” before the wording to make it definite] featuring entertainment and educational topics relating to history, culture, wildlife, nature, exploration and adventure” in International Class 9;

 

“production of television programs; production and distribution of cable television programs [specify, “for others”]; entertainment services in the nature of an on-going television series featuring non-fiction content [specify the non-fiction content because the wording is indefinite] provided through {indicate broadcast medium, e.g., cable television, webcasts, radio broadcasts}; entertainment services, namely, production, distribution and rental of motion picture films featuring non-fiction content, news and stories, music, comedy or drama; providing [provide detailed explanation of the nature of the information] information via a global communications network in the fields of facts [wording “field of facts” is ambiguous and not a field] regarding science, natural history, natural science, geography, the environment, geology, anthropology, zoology, botany, social studies, history, world cultures, [Note:  if the information services end at this point, a semicolon must be used]

 

[specify type of news because the term itself does not identify a field of information—see attached entries, e.g., general – because “financial news” would be class 36] news and stories [term “stories” is too broad and indefinite—specify subject matter of stories],

 

 

games [specify type of games—check online ID Manual referenced above for proper formats], video [term indefinite and too broad—specify subject of video—check ID Manual], television programs [explain further –what about television programs], and motion pictures [wording is hanging at the end as if it identifies goods—if ” in International Class 41.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

 

If applicant adds a class to the application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        Applicant must list the goods and/or services by international class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

 

 

 

Christopher L. Buongiorno

/Christopher L. Buongiorno/

Law Office 102

(571) 272-9251

 

 

 

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 7/8/2009 FOR

APPLICATION SERIAL NO. 77713806

 

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=77713806&doc_type=OOA&mail_date=20090708 (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 7/8/2009.

 

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.