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  78/767241

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 2879536 and 1465790 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

Applying the above analysis, the trademark attorney must first note that the marks are similar.  The applicant is proposing to register the mark WINNER’S CIRCLE for “Audio CD's featuring financial sales and marketing techniques” in International Class 9. 

 

The first cited registered mark is THE WINNER’S CIRCLE for " Providing columns in newsletters via email and online columns on web sites on the subject of financial service, management, planning, advising and investment" in International Class 41 and “Series of non-fiction books and series of columns in magazines on the subject of financial service, management, planning, advising and investment” in International Class 16.

 

The marks are the same as to Winner’s Circle.

 

As to the second half of the test, the goods and services are very closely related.  In fact they are likely to be used together as it relates to financial services which includes financial sales. Consumers encountering the applicant’s mark are likely to believe that because the marks are almost identical same and the  goods and services are related, the mark is associated with the registrant. Thus, since the marks are similar and the goods and services are related, there is a likelihood of confusion and registration must be refused

 

The second cited mark is WINNERS CIRCLE and design for “marketing and advertising agency services rendered to local, regional and national business concerns” in International Class 35.

 

The marks are the same as to the wording.

 

As to the second half of the test, the goods and services are closely related and are likely to be used together.  Consumers encountering the applicant’s mark are likely to believe that because the marks are very similar and the  goods and services are related, the mark is associated with the registrant. Thus, since the marks are similar and the goods and services are related, there is a likelihood of confusion and registration must be refused.

                       

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Potential Section 2(d) Refusal

The examining attorney encloses information regarding pending Application Serial Nos. 78533577 [WINNERS’ CIRCLE], and 78557711 [THE WINNER’S CIRCLE].  The filing dates of the referenced applications precede the applicant's filing date.  There may be a likelihood of confusion between the applicant's mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the marks are the same or very similar and the goods and services are closely related.  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

If the applicant believes that there is no potential conflict between this application and either one of the earlier-filed applications, the applicant may present arguments relevant to the issue.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

Mrs. A.D. Saunders

/Mrs. A. D. Saunders/

Trademark Attorney

LO 109

(571) 272-9349

(571) 273-9109 (formal responses only)

 

 

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.