UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
|
U.S. APPLICATION SERIAL NO. 79248793
MARK: WONDERHOOD
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: Wonderhood Limited
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1442484
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following classes in the application: International Classes 9 and 41. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
This partial refusal only applies to the goods and services denoted in International Classes 9 and 41.
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5092079 and 5147259. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Facts
Applicant’s mark WONDERHOOD is for “Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment and computers; computer software; computer programs; mobile apps; data storage media; electronic publications; downloadable software applications; downloadable software in the nature of a mobile application; downloadable mobile applications; pre-recorded discs, cassettes, cartridges, tapes, CD-ROMs and DVDs featuring dramatic, comedy, documentary, travel, music and variety of motion picture films; pre-recorded video discs, audio-visual recordings, downloadable audio-video recordings, and DVDs featuring information, text, audio and video content in the fields of dramatic, comedy, documentary, travel, music and variety of motion picture films; downloadable electronic publications in the nature of magazines” in International Class 9 and “Entertainment; sporting and cultural activities; television entertainment; production and distribution of television programmes; providing multi-media entertainment via a website; provision of entertainment services through the media of television; provision of entertainment services through the media of cine-films; provision of entertainment services through the media of video-films; entertainment services, namely, providing non-downloadable television programmes and events via a video-on-demand service; entertainment services in the nature of ongoing audio-visual programmes provided via television, satellite and digital audio and video transmission over wired and wireless networks; production of television entertainment features, programmes and events; providing entertainment and media related information via a global computer network; entertainment services provided via a website; providing entertainment products via a global communication network or databases; production of television programs for broadcast on mobile devices; entertainment services in the nature of non-downloadable images and videos in connection with entertainment provided via global computer networks, wireless communication networks, mobile, portable, and handheld device applications, tablets and connected televisions; providing movie, television and music video entertainment via an interactive web-site; publication of printed matter and printed publications; electronic publication of texts and printed matter, other than publicity texts, on the Internet; provision of entertainment services through the media of publications; film production and distribution; music publishing services; recording studio services; provision of entertainment; information services provided on-line from a computer database or from the Internet relating to popular culture, namely, music, fashion shows, social commentary, film and television; business training services; business educational services; business training consultancy services; multimedia publishing of magazines” in International Class 41.
The cited marks are as follows:
Standard for likelihood of confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the present case, applicant’s mark is WONDERHOOD and the registered marks are also WONDERHOOD. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the goods and services
The parties’ goods and services are related.
The compared goods and services 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); TMEP §1207.01(a)(i). They 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).
The attached Internet evidence, consisting of screenshots of the websites for Disney®, PBS® and Marvel®, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. For example, Marvel® offers entertainment services in the nature of production of films, television entertainment, and pre-recorded discs featuring motion picture films, educational and artistic toys and retail services pertaining to such toys. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, registration of the applied-for mark in International Classes 9 and 41 is refused under Section 2(d) of The Trademark Act.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In a Trademark Act Section 66(a) application, classification of goods and services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
Applicant may substitute the following, if accurate (additions are shown in bold, and deletions are shown as bolded strikethrough text):
International Class 9
Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers and recording discs featuring {indicate subject matter, e.g.,
movies, dramas, comedies, etc.}; compact discs, DVDs and other digital recording media in the nature of {clarify the nature of recording media, e.g.,
video cassettes} featuring {indicate subject matter, e.g., movies, dramas, comedies, etc.}; data processing equipment and
computers; computer software for {indicate function of software and field is software is field-specific, e.g., watching movies, watching television programs,
etc.}; computer programs for {indicate function of software and field is software is field-specific, e.g., watching movies, watching television programs,
etc.}; mobile apps for {indicate function of software and field is software is field-specific, e.g., watching movies, watching television programs,
etc.}; data storage media in the nature of {clarify the nature of goods, e.g., blank video recording tapes, blank record disks, etc.}; downloadable electronic publications, namely, {clarify the nature of the goods, e.g., magazines, brochures, etc.} in the field of {indicate subject
matter, e.g., movies, television shows, etc.} ; downloadable software applications for {indicate function of software and field is software is
field-specific, e.g., watching movies, watching television programs, etc.}; downloadable software in the nature of a mobile application for {indicate
function of software and field is software is field-specific, e.g., watching movies, watching television programs, etc.}; downloadable mobile applications for {indicate function of software and field is software is field-specific, e.g., watching movies, watching television programs, etc.}; pre-recorded discs,
cassettes, cartridges, tapes, CD-ROMs and DVDs featuring dramatic, comedy, documentary, travel, music and variety of motion picture films; pre-recorded video discs, audio-visual recordings,
downloadable audio-video recordings, and DVDs featuring information, text, audio and video content in the fields of dramatic, comedy, documentary, travel, music and variety of motion picture films;
downloadable electronic publications in the nature of magazines in the field of {indicate subject matter, e.g., children’s entertainment, movies,
etc.}
International Class 9
Advertising; business management; business administration; advertising, marketing and promotional services; distribution of advertising, marketing and promotional material; advertising, marketing and promotional consultancy, advisory and assistance services; on-line advertising and marketing services; business management of performing artists
International Class 41
Entertainment, namely, {clarify the nature of the services, e.g., entertainment information, production and distribution of movies, etc.}; sporting and cultural activities, namely, {clarify the nature of the services, e.g., museum services, organizing sporting and cultural events, etc.}; television entertainment, namely, providing an ongoing television program in the field of {indicate subject matter}; production and distribution of television programmes; providing multi-media entertainment via a website, namely, {indicate subject matter, e.g., comedy, drama, etc.}; provision of entertainment services through the media of television, namely, providing an ongoing television program in the field of {indicate subject matter}; provision of entertainment services through the media of cine-films, namely, production and distribution of cine-films; provision of entertainment services through the media of video-films, namely, production and distribution of video-films; entertainment services, namely, providing non-downloadable television programmes and events via a video-on-demand service; entertainment services in the nature of ongoing audio-visual programmes provided via television, satellite and digital audio and video transmission over wired and wireless networks in the field of {indicate subject matter, e.g., fashion, sports, etc.}; production of television entertainment features in the nature of television programs, radio programmes and production of events being the organizing and arranging social entertainment events; providing entertainment information and media related information in the nature of entertainment information about television and radio programs via a global computer network; entertainment services provided via a website, namely, {clarify the nature of the goods, providing on-line, non-downloadable games, entertainment information, etc.}; providing entertainment products via a global communication network or databases, namely, {clarify the nature of the goods, providing on-line, non-downloadable games, entertainment information, etc.}; production of television programs for broadcast on mobile devices; entertainment services in the nature of online, non-downloadable images and videos in connection with entertainment provided via global computer networks, wireless communication networks, mobile, portable, and handheld device applications, tablets and connected televisions; providing movie, television and music video entertainment in the nature of online, non-downloadable movies, ongoing television programs and videos in the field of {indicate subject matter}, via an interactive web-site; publication of printed matter and printed publications; electronic publication of texts and printed matter, other than publicity texts, on the Internet; provision of entertainment services through the media of publications, namely, publication of texts, books and magazines; film production and distribution; music publishing services; recording studio services; provision of entertainment information; entertainment information services provided on-line from a computer database or from the Internet relating to popular culture, namely, music, fashion shows, social commentary, film and television; business training services; business educational services, namely, providing {indicate mode of instruction, e.g., classes, workshops, seminars, etc.} in the field of business; business training consultancy services; multimedia publishing of magazines
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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. See TMEP §1402.04.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following classes will be deleted from the application: International Classes 9 and 41. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following class only: International Class 35. See TMEP §718.02(a).
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the goods and/or services in International Classes 9 and 41 identified above, in the beginning of this Office action, will be deleted from the application.
In such case, the application will then proceed only with the following class: International Class 35. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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 U.S. commonwealths or U.S. territories. 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.
/Gidette Cuello/
Gidette Cuello
Trademark Examining Attorney
Law Office 125
(571)272-1122
gidette.cuello@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.