Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78755108 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION 

RE: SERIAL NO. 78/755108/ "PROPAGANDA"

     

      Examining Attorney has determined that a likelihood of confusion exists between Applicant's mark "PROPAGANDA" and registered mark "PLANET PROPAGANDA" Reg. No. 2729657. Examining Attorney has noted two bases for determining a likelihood of confusion.  First that Applicant's and Registrant's marks are highly similar in appearance, sound, connotation and commercial impression both contain the wording PROPAGANDA.  And second, the same consumers will be exposed to the goods/services identified with the registered mark and the Applicant’s mark and confusion as to the products' origin is likely.

      

Factors Determining Likelihood of Confusion

      Under §1207.01 of the TMEP, if relevant evidence is contained in the record, the following factors are the most relevant in determining a likelihood of confusion:

"- The similarity or dissimilarity of the marks in their entireties as to the appearance, sound, connotation and commercial impression.

- The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

- The conditions under which and buyers to whom sales are made, i.e. "impulse v. careful, sophisticated purchasing."

TMEP §1207.1 further states that "(t)he basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used?"  citing In re National Data Corp., 753 F.2d 1056, 1058; 224 USPQ 749,750-51 (Fed. Cir.1985).

      In the instant matter, Applicant believes that there is no likelihood of confusion.

 

Similarity of Marks

      Examining Attorney notes that registrant's mark PLANET PROPAGANDA is highly similar in sound and appearance to Applicant's mark because it contains the words "PROPAGANDA".   Applicant disagrees with Examining Attorney's determination that the two marks are identical in appearance but does agree that they are similar because Registrant's mark contains the words PLANET in addition to PROPAGANDA.  As described below, Applicant’s mark will be not be directed toward the same consumer since Applicant's clientele is based in the action sports industry (sports consisting of surfing, skateboarding, motocross, snowboarding, and bmx).

 

Appearance Connotation and Commercial Impression

      Applicant's mark is sufficiently different in appearance, connotation and commercial impression to registrant's mark.

      "(M)arks may be phonetically similar, but confusion is prevented by the different suggestive connotations of the marks."  McCarthy on Trademarks and Unfair Competition §23:28, citing Gulf States Paper Corp. v. Crown Zellerbach Corp., 417 F.2d 795, 163 USPQ 589 (CCPA 1969).  These factors emphasize the difference in commercial impression between the two marks.

The Relatedness of The Goods or Services

      TMEP §1207.01(b) states "(t)he test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side by side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of goods or services.  When considering the similarity of the marks, [a]ll relevant facts pertaining to appearance and connotation must be considered."  Citing Recot, Inc. v. M.C. Becton, 214 F. 3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir.2000).

 

      Here, Applicant's goods are marketed towards mid to large size companies in the Sporting Industry, specifically in the Action Sports Industry (consisting of sports such as surfing, skateboarding, motocross, snowboarding, and bmx).  These clients seek cosnulting services related to events and services in this specific industry.  Applicant's business is narrowly tailored to specifically-identified clients who wish to tap into Applicant's vast connections, knowledge, and contacts in the Action Sports Industry and youth markets.  Applicant is not an advertisement agency as Registrant is event production, branding, marketing and management are Applicant's main services.

 

      Applicant's business name is PROPAGANDA HEADQUARTERS and is highly recognized and well-known in the sports industry, therefore, there is no likelihood that the average consumer who is interested in Applicant's services would be confused with Registrant.  There is no evidence that Registrant caters to the sports industry or that Applicant and Registrant have any over-lapping clientele.

 

      The Applicant's and Registrant's respective client base are completely different. Applicant has built its goodwill in becoming one of the most reputable and most well-known action sports marketing agencies in the Action Sports industry.  Applicant has been using its mark in commerce as early as March 2001, one and half (1 1/2) years prior to Registrant's use of the mark.  

 

Conclusion

 

      Based on the above, there are enough significant factors establishing the differences between Applicant's mark and Registrant's.  Furthermore, for the reasons stated herein, Applicant's mark would not lead to the likelihood of confusion under Section 2(d) if its application for registering its mark, PROPAGANDA, is granted.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for Advertising and consulting services in the areas of marketing, branding and product development; management of professional athletes and entertainers; arranging and conducting marketing promotional events for others; advertising, including promotion of products and services of third parties through sponsorship arrangements and license agreements relating to various events; and public relations, in International Class 35
Original Filing Basis: 1(a).
Proposed: Class 035 for Advertising and consulting services in the areas of marketing and branding; management of professional athletes and entertainers; arranging and conducting marketing promotional events for others; advertising, including promotion of products and services for third parties through sponsorship arrangements and license agreements relating to various events; and public relations, in International Class 35
Filing Basis: 1(a).

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /ssn/      Date: 11/25/2006
Signatory's Name: Sunny S. Nassim
Signatory's Position: Attorney

Response Signature
Signature: /ssn/     Date: 11/25/2006
Signatory's Name: Sunny S. Nassim
Signatory's Position: Attorney
        
Serial Number: 78755108
Internet Transmission Date: Sat Nov 25 22:45:21 EST 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-200611252245214
26483-78755108-3401de2e9c6e0ea3bd703ee88
2fad5c51-N/A-N/A-20061125221950768327