UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/560168

 

This letter responds to applicant’s communication filed on February 20, 2006.

 

The Examining Attorney has carefully reviewed Applicant’s response, and concluded the following.

 

Section 2(d) - Likelihood of Confusion

 

The prior pending Application previously cited has, since the time of the last office action, registered; therefore, registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration No(s). 3021240.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

Facts

 

Applicant proposes “promoting a variety of live entertainment events for others and promoting merchandise related thereto; business management and promoting the special events of others, all in the field of musical, theatrical, educational, cultural and family/variety tours and presentations; ticket agency services for musical concerts and other entertainment events through an online subscription service; retail merchandise service featuring artist and tour-related merchandise and collectibles; promoting the goods and services of others through an online subscription service through which users can link to online retail services and internet service providers; promoting ticket sales and "VIP" privileges for live entertainment events for others; promoting the sale of entertainment packages; providing auction services for entertainment packages; event management services and business marketing and consulting services in the field of entertainment; business management in the nature of securing naming rights and sponsorship agreements for entertainment events for others; business development and management of entertainment events for others” for use in connection with mark FANBASE. 

 

Registrant provides “Advertising agency services relating to celebrities; business marketing consulting services relating to celebrities” in connection with the mark FANBASE.

 

Similarity Of The Marks

 

The marks are identical.

 

Relatedness of the Goods/Services

 

Both Applicant and Registrant offer advertising and business marketing services.  Further, both services are offered in the field of entertainment.  Registrant’s services relate specifically to celebrities while Applicant’s services relate to the broader field of entertainment and events.  Nevertheless, both offer the same services in the same or similar field.

 

Thus, the goods and/or services are related.

 

Conclusion

 

Accordingly, because the marks are similar, and the goods and/or services are related, there is a likelihood of confusion.  The mark is refused based on § 2(d).

 

Identification Of Services

 

The identification of services issue is maintained and continued.

 

The identification of services is unacceptable as indefinite because some of the terms are overly broad so that the goods are vague and/or could fall into a different international class.  Suggestions and explanations are incorporated into the identification proposed below.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

 

Promoting a variety of live entertainment events for others and merchandise related thereto through (indicate how events and merchandise are promoted); business management and arranging events for others in the field of musical, theatrical and family/variety tours and presentations; Ticket agency services for musical concerts and other entertainment events through an online subscription service; retail merchandise service, namely (indicate precisely what service applicant offers using common commercial name.  The term “retail merchandise service” is, on its own, indefinite) featuring artist and tour-related merchandise and collectibles; promoting the goods and services of others through an online subscription service through which users can link to online retail services and Internet service providers; promoting ticket sales and "VIP" privileges for live entertainment events through (indicate how events and merchandise are promoted); promoting the sale of entertainment packages through (indicate how events and merchandise are promoted); arranging events for others event in the field of entertainment; business marketing in the field of entertainment; Business marketing consulting services in the field of entertainment; business management in the nature of securing naming rights and sponsorship agreements for entertainment events; business management of entertainment events.  International Class 35.

 

[The services in class 41 are acceptable as written.]

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

For assistance with identifying goods and/or 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.

 

 

 

/S. David Sterkin/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 110

(571) 272-5494

david.sterkin@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.