UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

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: 9/22/2010

 

On March 15, 2010, action on this application was suspended pending the disposition of Application Serial No. 77532875.  The referenced prior-pending application has since registered.  Therefore, registration is refused under Section 2(d).  In addition, applicant must clarify the identification of services as indicated below and submit an additional claim of ownership, both of which are new issues. 

 

SUMMARY OF ISSUES that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Identification Requirement
• Claim of Ownership Requirement

 

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 No. 3761680.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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).

 

Applicant’s mark is “THE WORKS” with a gear design for “Educational services, namely, conducting classes, seminars, workshops, lectures, conferences and digital presentations in the fields of glassblowing, crafts, art and history for children of all ages, boy scout troops, student interns, adults, and teachers; educational services, namely, conducting community art lectures and summer art programs; educational services, namely, lectures on digital technology for computer groups and teachers; summer camps, educational demonstrations, educational craft and glass blowing demonstrations; museum services; guided tours of museums and art exhibits and historical sights in Licking County”.  Registrant’s mark is “THE WORKS” for “Multimedia goods, namely, pre-recorded DVD's featuring television programs in the field of history and secrets and facts about ordinary objects and materials; digital video discs featuring television programs in the field of history and secrets and facts about ordinary objects and materials; digital downloads featuring stories in the field of history and secrets and facts about ordinary objects and materials; webcasts recorded on computer media featuring stories in the field of history and secrets and facts about ordinary objects and materials; downloads to mobile devices featuring stories in the field of history and secrets and facts about ordinary objects and materials; Entertainment services, namely, a multimedia program series featuring stories in the field of history and secrets and facts about ordinary objects and materials distributed via various platforms across multiple forms of transmission media; information regarding same provided via a global computer network”.

 

Applying the above analysis, the literal portions of the marks are identical.  Moreover, while applicant’s mark contains a gear design, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

 

As such, viewed as a whole, applicant's mark is identical in sound, connotation and commercial impression to the registered mark.

 

If the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

As to the second half of the test, the services are closely related classes, seminars, entertainment programs and recordings of entertainment programs featuring similar subject matter.  Specifically, both registrant’s and applicant’s services are in the field of history.  Moreover, the attached website evidence from http://www.school.discoveryeducation.com and http://www.pbs.org indicates that programs or television shows commonly feature a classroom or educational component containing information and instruction on the same subject matter as the shows or programs.

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or 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, namely, various types of recordings featuring information about history and educational services and television programs in the field of history, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp. of Dallas,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).

 

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, it is sufficient that the goods and/or services are related in some manner and/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).

 

Thus since the literal portions of the marks are identical and the services are closely related, there is a likelihood of confusion and registration must be refused.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

APPLICANT’S ARGUMENT

 

Applicant argues that it owns a prior registration for a similar mark which pre-dates the filing date of the registration cited above.  Further, applicant notes that its prior registration was not cited against the application that has matured into Reg. No. 3761680 and therefore the registration should not be cited against the instant application.  This argument is not persuasive. 

 

Prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office.  TMEP §1207.01(d)(vi).  Each case is decided on its own facts, and each mark stands on its own merits.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Int’l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).  In addition, see TMEP §1216.01 which states in relevant part:

 

Trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re Styleclick.com Inc., 58 USPQ2d 1523 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000).

 

Each case must be decided on its own facts. The USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records.

 

Applicant must respond to the requirement(s) set forth below.

 

IDENTIFICATION OF SERVICES

 

The wording “Boy scouts” in the identification of services is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No(s). 89000095, 89001573 and 1363872.  In addition, the wording is protected by federal statute.  See 36 U.S.C. §30905.  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Therefore, applicant must amend the identification of services by deleting the wording “Boy scout troops” and substituting the common commercial or generic name for the services. 

 

If accurate, applicant may adopt the following identification of services which is identical to the description of services in applicant’s prior registration Reg. No. 3827358:

 

Educational services, namely, conducting classes, seminars, workshops, lectures and conferences in the fields of digital presentations, glassblowing, crafts, art and history for children of all ages, student interns, adults, and teachers; educational services, namely, conducting community art lectures and summer art programs; educational services, namely, lectures on digital technology for computer groups and teachers; summer camps, educational demonstrations, educational craft and glass blowing demonstrations; museum services; guided tours of museums and art exhibits and historical sights in Licking County

 

CLAIM OF OWNERSHIP OF REGISTRATIONS

 

Applicant has claimed ownership of U.S. Reg. No. 2825006.  It appears that another of applicant’s applications has subsequently registered and must now be claimed.  If applicant is also the owner of U.S. Registration No. 3827358, then applicant must submit an additional claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 3827358 and 2825006.

 

RESPONSE TEAS

 

To expedite prosecution of the application, applicant is encouraged to file its 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.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Blake Lovelace/

James B. Lovelace

Trademark Examining Attorney

Law Office 117

P: 571.270.1533

F: 571.270.2533

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  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.

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/22/2010 FOR

SERIAL NO. 77864696

 

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

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/22/2010 (or sooner if specified in the office action).

 

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.

 

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

 

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