UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 8/7/2017

 

INTERNATIONAL REGISTRATION NO. 1329956

 

This letter confirms applicant’s response filed June 6, 2017. 

 

The refusal under Trademark Act Section 2(d) based on U.S. Registration Nos. 2332098, 2556566, 4249627, 4776463, 4835386, 5039737 and 5059991 has been obviated by the arguments and amended description of goods and services in applicant’s response.  In addition, the potential refusal under Trademark Act Section 2(d) based on U.S. Application Serial No. 86121433 has been withdrawn since this application was abandoned.  Finally, the requirements to properly amend the mark description and color claim statement of record and disclose the meaning of the word “THUNDER” in the applied-for mark have been satisfied.

 

However, inasmuch as applicant’s amended identification of goods in Class 9 raises a new issue, the examiner must now issue this non-final Office Action.

 

Particular Words Unacceptable – Would Exceed Scope of Goods in Original Application

The following requirement applies only to the identified goods in Class 9.

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the goods in the initial application.  See 37 C.F.R. §2.71(a); TMEP §§1402.01(c), 1904.02(c)(iv).  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Therefore, the original identification in the U.S. application as filed, or as acceptably amended, remains operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §§1402.01(b), 1402.07(d).

 

In this case, the application identifies the goods in the specified class as follows:  “Compact discs, DVDs and other digital recording media, in particular data carriers for computers having software recorded which enable placing, management and dissemination of information (including text, image and sound) via electronic means (both via the internet and intranets); computer software, in particular downloadable software in the field of content management”, in International Class 9.

 

However, the proposed amendment identifies the following goods in the specified class:  “Computer software, namely software for developing, generating, organizing, managing, publishing, transmission, and sharing content and electronic data in the field of content management systems for publishing purposes”, in International Class 9.  [Emphasis added].

 

The proposed amendment is beyond the scope of the original identification because the amended software is not “downloadable” or recorded on CDs, DVDs and magnetic data carriers, as noted in the original description.

 

Accordingly, applicant may respond by deleting the proposed amendment to the goods and/or arguing that the amendment is within the scope of the goods in the initial application and should remain in the application.  See 37 C.F.R. §2.71(a); TMEP §§1402.07(a), (e), 1904.02(c)(iv).  If this issue is being made final, applicant may appeal to the Trademark Trial and Appeal Board under 37 C.F.R. §§2.141, 2.142, or petition the Director under 37 C.F.R. §2.146 if permitted by 37 C.F.R. §2.63(b)(2).  TMEP §1904.02(c)(iv).

 

In addition, applicant must further modify the amended recitations in Classes 38 and 42 to clarify the nature of the services intended to be associated with the mark, as noted below.

The applicant may adopt any or all of the following descriptions, if accurate:

“Computer programs recorded on CDs and DVDs, namely, software for developing, generating, organizing, managing, publishing, transmission and sharing content and electronic data in the field of content management systems for publishing purposes; digital recording media, namely, prerecorded magnetic data carriers featuring software for developing, generating, organizing, managing, publishing, transmission and sharing content and electronic data in the field of content management systems for publishing purposes; downloadable software for developing, generating, organizing, managing, publishing, transmission and sharing content and electronic data in the field of content management systems for publishing purposes”, in International Class 9;

“Providing access to global computer information networks in the field of a content management systems for publishing purposes”, in International Class 38; and/or

“Rental of computer software in the field of a content management system for publishing purposes; software as a service (SAAS) services featuring content management system (CMS) software for enabling users to develop, generate, organize, manage, publish, transmit and share content and electronic data for publishing purposes”, in International Class 42.

TMEP §1402.11.

For assistance with identifying and classifying 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.  See TMEP §1402.04

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Furthermore, any goods or services deleted by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e).

Outstanding Refusal - Likelihood of Confusion

A.  Comparison of Goods and Services

Applicant argues that the goods and services of the parties are unrelated because “[its] mark covers nothing related to entertainment or comedy offerings” and the amended identification of goods and services “are each far more narrowly tailored and are each limited to content management software for use in the field of publishing – a field far different from the earlier registered THUNDER cited marks.”

However, the goods and 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). 

Rather, the respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).

Furthermore, the fact that the goods and services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods and services, but likelihood of confusion as to the source or sponsorship of those goods and services.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

In addition, the question of likelihood of confusion is determined based on the description of the goods and services stated in the application and registrations at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Absent restrictions in an application and/or registration, the identified goods and 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 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).

In this case, contrary to applicant’s position, the identification set forth in the application and registrations has no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these goods and services travel in all normal channels of trade and are available to the same class of purchasers.

Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including computer software recorded on CDs, DVDs and magnetic data carriers and downloadable software all featuring the same purposes and functions associated with the cited marks.

B.  Comparison of Marks

As noted in the Office Action mailed February 21, 2017, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). 

Applicant argues that the marks are readily distinguishable as to obviate a likelihood of confusion when viewed in their entireties.  However, with regard to the registered marks THUNDER TABLES, THUNDERSHORTS and THUNDERPLUG, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))). 

In addition, 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.

In the present case, the word “THUNDER” in the registered marks is identical to the word “THUNDER” in the applied-for mark.  This word also comprises the dominant portion of the registered marks as consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark and service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

Moreover, the word “THUNDER” is the dominant portion of the registered marks as the words “TABLES”, “SHORTS” and “PLUG” are generic and/or highly descriptive in relation to the goods and services associated with the marks.  In this regard, although marks are compared in their entireties, disclaimed matter that is descriptive of or generic for a party’s goods and services is 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). As such, the respective marks create similar overall commercial impressions.

Regarding the registered mark THUNDR, the only practical difference between the marks is the additional silent letter “E” at the end of the proposed mark.  However, minor changes in words (e.g. phonetic substitution) are insufficient alone to distinguish marks.  Therefore, this minor difference does not alter the commercial impressions of the marks sufficiently to obviate the likelihood of confusion.

Additionally, the registered mark THUNDER is legally identical to the applied-for mark.  In this regard, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

Finally, applicant argues that confusion is unlikely because “the stylized wording and the unique design elements in [its] mark” sufficiently distinguishes the marks.  However, for a composite mark containing both words and a design, the word portion is more likely to indicate the origin of the goods and services because it is that portion of the mark that consumers use when referring to or requesting the goods and services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

Furthermore, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).

C.  Other Considerations

In response to applicant’s argument regarding sophisticated purchasers, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).

Based on the foregoing remarks, the refusal under Trademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration Nos. 3626054, 4295931, 4590128, 4798007 and 4840610 is maintained and continued.

Miscellaneous

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

Advisory Regarding E-mail Communications

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.

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/7/2017 FOR U.S. APPLICATION SERIAL NO. 79201074

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 8/7/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.