UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79162659
MARK: VOODOO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: CHRIS BANGLE ASSOCIATES S.R.L.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1241067
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SUMMARY OF ISSUES that applicant must address:
Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4706038, 3700626, 4536428, 4566813, 3736208, 4651120. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Here, the marks are:
VOODOO and design
CONVERSION VOODOO
VOODOO and design
BIG VOODOO
BIGVOODOO INTERACTIVE and design
VUDO MARKETING
VOODOO GRAPHICS
Applicant’s mark is similar to registrations 4706038, 3700626, 4536428, 4566813 and 4651120 as each contains the highly distinctive wording VOODDOO as the most dominant literal portion. The added wording INTERACTIVE, GRAPHICS and CONVERSION in the cited registrations is disclaimed matter which does not remove the similarity. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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 at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
Applicant’s mark is similar to the VUDU MARKETING mark as VUDU and VOODOO are phonetically equivalent. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Moreover, as discussed above, the added, disclaimed, MARKETING in the registered mark does not remove the similarity.
Next, the services are related. The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Registration 3736208 is for marketing consulting services. Applicant provides “advertising and marketing consultancy.” Each party provides marketing consulting. Thus, the services are identical. Further, applicant’s broadly defined education services are presumed to include education in all fields, including advertising and marketing. Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Thus, the services of the parties are related as applicant is presumed to provide education and training in the very fields in which registrant provides its services. Note that this bar to registration applies to “Class 35--advertising and marketing consultancy” and “Class 41--Providing of training; arranging and conducting of symposiums; arranging and conducting of workshops (training); education and training services; organization of educational events; conducting of educational events.” Applicant may delete these services and the bar to registration will be lifted.
Registration 4706038 is for “lead generation services.” The attached web pages make clear that lead generation is a marketing/advertising activity. Applicant provides “advertising and marketing consultancy.” Thus, applicant’s services are read to include lead generation consulting as lead generation is a form of marketing. Further, applicant’s broadly defined education services are presumed to include education in lead generation. Thus, the services of the parties are related as applicant is presumed to provide education and training in the very fields in which registrant provides its services. Note that this bar to registration applies to “Class 35--advertising and marketing consultancy” and “Class 41--Providing of training; arranging and conducting of symposiums; arranging and conducting of workshops (training); education and training services; organization of educational events; conducting of educational events.” Applicant may delete these services and the bar to registration will be lifted.
Registration 3700626 is for certain marketing and advertising services. Applicant provides “advertising and marketing consultancy.” Thus, each party provides marketing and advertising services. Further, applicant’s broadly defined education services are presumed to include education in marketing and advertising. Thus, the services of the parties are related as applicant is presumed to provide education and training in the very fields in which registrant provides its services. Note that this bar to registration applies to “Class 35--advertising and marketing consultancy” and “Class 41--Providing of training; arranging and conducting of symposiums; arranging and conducting of workshops (training); education and training services; organization of educational events; conducting of educational events.” Applicant may delete these services and the bar to registration will be lifted.
Registrations 4536428 and 4566813 are for certain marketing and advertising services as well as “Business advisory services in the field of the marketing of legal services; Business management and consultation in the field of the marketing of legal services; Offering business management assistance in the establishment and/or operation of law offices.” Applicant provides “business consultancy; advertising and marketing consultancy.” Thus, each party provides marketing and advertising services. Additionally, applicant’s “business consultancy” includes such consultancy in the same fields in which registrant provides its business advice and consultancy. Thus, the services are related. Further, applicant’s broadly defined education services are presumed to include education in marketing and advertising. Thus, the services of the parties are related as applicant is presumed to provide education and training in the very fields in which registrant provides its services. Note that this bar to registration applies to “Class 35—business consultancy; advertising and marketing consultancy” and “Class 41--Providing of training; arranging and conducting of symposiums; arranging and conducting of workshops (training); education and training services; organization of educational events; conducting of educational events.” Applicant may delete these services and the bar to registration will be lifted.
Registration 4651120 is for services including “graphic design.” Applicant provides services including “Industrial and graphic art design; styling (industrial design).” Registrant’s “graphic design” includes all such design including “graphic art design.” Thus, the services are identical in part. Further, it is extremely common for providers of graphic design to also provide industrial design under the same mark. See the attached third party registrations as well as the application at issue. Thus, the services are related. Further, applicant’s broadly defined education services are presumed to include graphic art education. Thus, the services of the parties are related as applicant is presumed to provide education and training in the very fields in which registrant provides its services. Note that this bar to registration applies to “Class 42-- Industrial and graphic art design; styling (industrial design)” and “Class 41--Providing of training; arranging and conducting of symposiums; arranging and conducting of workshops (training); education and training services; organization of educational events; conducting of educational events.” Applicant may delete these services and the bar to registration will be lifted.
The marks are similar in each case. The services are related. Thus, there is a likelihood of confusion and registration must be
denied.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Mark Description
The mark consists of a rectangular design featuring the stylized wording VOODOO with a curved and straight line design inside the rectangle.
Certain wording in the identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). The following clauses either require amendment or are acceptable as indicated:
Class 35
Acceptable as filed.
Class 41
“Providing of training; Arranging and conducting of symposiums; arranging and conducting of workshops (training); education and training services;” is too broad. Applicant must define the field of training and education. Note that parenthesis are unacceptable in the description. Applicant may state “providing of training in the field of industrial and graphic art design; Arranging and conducting of educational symposiums in the field of industrial and graphic art design; arranging and conducting of workshops in the field of industrial and graphic art design; educational services, namely, classes and seminars in the field of industrial and graphic art design;”
“organization of cultural events;” is acceptable.
“Organization of educational events;” must be defined further. Applicant may state “organizing of events in the field of industrial and graphic art design for educational purposes.”
“Conducting of cultural events;” is acceptable.
“Conducting of educational events” must be defined further. Applicant may state “conducting of events in the field of industrial design for educational purposes.”
Class 42
“Industrial and graphic art design;” is acceptable.
“Styling (industrial design), architecture;” is unclear. Applicant may state “architectural design.”
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Daniel F. Capshaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.