To: | Severino Marcelo Javier (aerialtv@hotmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77932305 - ACTIVA - N/A |
Sent: | 5/15/2010 1:51:41 PM |
Sent As: | ECOM104@USPTO.GOV |
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UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/932305
MARK: ACTIVA
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Severino Marcelo Javier
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 5/15/2010
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
In this case, the following factors are the most relevant: similarity of the marks, similarity of the services, and similarity of trade channels of the 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.
COMPARISON OF THE MARKS
The applicant’s proposed mark consists of the stylized wording ACTIVA. The registrant’s mark in U.S. Registration No. 2311166 is the wording ACTIVA PRODUCTIONS with the word PRODUCTIONS disclaimed as descriptive. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Accordingly, the dominant literal portions of the marks are identical.
COMPARISON OF THE SERVICES
In this case, the applicant intends to use its proposed mark in conjunction with “entertainment, namely, production of television shows.” The registrant is using its mark in conjunction with “production of documentary films on the subjects of feminism, political activism and gay/lesbian issues.” The services are related in that television show and documentary film production are often provided by the same entity.
APPLICANT MAY RESPOND
The following translation statement is suggested: “The English translation of ACTIVA in the mark is ACTIVE.” TMEP §809.03.
AMENDED DESCRIPTION OF MARK REQUIRED
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the wording ACTIVA in the color pink dissolving to the color white at the top of the wording outlined in the color black with a design featuring small black stars, a butterfly and curved lining and indeterminate shapes in the color black above and to the left of the letters AC.
ADDITIONAL FEE REQUIRED
Applicant must submit an additional application processing fee of $50 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a), (b); TMEP §§819.01 et seq., 819.04. Specifically, the following application filing requirement(s) was not met: a translation of all non-English wording in the mark was not provided.
The additional fee is required even if applicant later corrects these application requirements.
RESPONSE GUIDELINES
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
/Verna Beth Ririe/
Trademark Attorney
Law Office 104
(571) 272-9310
(571) 273-9104 (office fax)
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.