Offc Action Outgoing

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: 12/16/2009

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

amendment to allege use

 

The amendment to allege use is accepted.

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 3584865.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the services, to cause confusion, mistake or to deceive the potential consumer as to the source of the services.  TMEP §1207.01.  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 consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the services.  The overriding concern is to prevent buyer confusion as to the source of the services.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

A likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  Second, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

The applicant applied to register the mark TLC: TABLES, LADDERS & CHAIRS for “Entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through the media of television; providing wrestling news and information via a global computer network.”  The registered mark is TLC for “broadcast of audio-visual content via television, satellite, wireless, fiber optics, cable and a global computer network,” and “entertainment services in the nature of ongoing television programs, webcasts and podcasts featuring non-fiction content in fields of general human interest, distributed through audio and video media, namely, television, satellite, wireless, fiber optics, cable and a global computer network; providing entertainment information regarding television programs, webcasts and podcasts featuring non-fiction content in fields of general human interest via a global computer network.”

 

Similarity of the Marks

 

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).

 

Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

In addition, the word portions are generally the dominant and most significant features of marks because consumers will call for the goods and/or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554, 556 (TTAB 1978).  For this reason, greater weight is often given to the word portions of marks in determining whether there is a likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii).

 

Here, the marks begin identically with the lettering “TLC.”  While registrant’s contains an element of stylization, this does not overcome the similarities between the marks because a design element is less significant than the word portion in forming the commercial impression of the marks.  In addition, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display.  TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a).  Thus, a mark presented in stylized characters or otherwise in special form generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).  Also, the additional wording in applicant’s mark does not overcome the similarities between the marks, because the marks begin with the identical acronym “TLC” and registrant’s mark contains no other wording to distinguish it from applicant’s mark.  The marks are therefore similar.

 

Comparison of Goods and/or 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).

 

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).

 

Here, both marks refer to television programs.  Applicant specifies that its programs are in the field of wrestling, but the subject matter of registrant’s television programs is very broadly defined to include “general human interest.”  Therefore, the registrant’s programs must be assumed to include programs featuring wrestling as well.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii).

 

Because the marks are similar and because the marks refer to closely related services, consumers would be likely to mistakenly believe that the goods and/or services emanate from a single source.  Accordingly, registration is refused under Trademark Section 2(d).

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Conclusion

 

Although the trademark examining attorney has refused registration, applicant may choose to respond to the refusal to register by submitting evidence and arguments in support of registration.

 

To expedite prosecution of this application, applicant is encouraged to file any response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

 

 

 

/kristindahling/

Kristin M. Dahling

Trademark Attorney, Law Office 113

U.S. Patent and Trademark Office

(571) 272-8277

 

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77824953) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 12/16/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77824953&doc_type=OOA&mail_date=20091216 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 12/16/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.