Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 29, 2020

 

International Registration No. 1498439

 

Notice of Provisional Full Refusal

 

Upon further review of the available evidence, the following refusal is raised for the first time.  The Examiner apologizes for any inconvenience.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

Section 2(d) – Likelihood of Confusion Refusal

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0755703, 2023417, 2066519, and 2068562.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant applied to register the mark ABC WORLD and design.

 

The registered marks are ABC, ABC and design and ABC SUPER SOAP WEEKEND.

 

In this case, applicant’s mark, ABC and design, is confusingly similar to the registrant’s marks, all for ABC and ABC and design.  The wording in the marks is identical.  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).

 

Comparison of the Goods and Services

The compared goods and/or 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).

In this case, applicant’s services, namely, “Audio and video broadcasting services over the Internet or other communications network, namely, electronically transmitting information, audio, and video clips; providing access to databases that contain information, audio, and video material from websites, online forums, chat rooms, discussion groups and blogs over the Internet; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing discussion services in the nature of on-line forums for transmission of messages among computer users; transmission of news, namely, provision of news in relation to telecommunication services,” and “Entertainment in the nature of on-going video programs in the field of news accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications, computer networks; provision of news in relation to education, training, entertainment or sporting and cultural activities; news reporters services; On-line library services, namely, providing electronic library services by means of a computerized database containing information extracted from newspapers via an on-line computer network; Information and advisory services relating to current events in the nature of providing news reporter services entailing news analysis and news commentary about current events; publication of reviews and critiques; publication of electronic books and journals on-line; providing non-downloadable on-line electronic publications in the nature of journals and books in the field of business and finance; electronic publishing services, namely, publication of text and graphic works of others on-line featuring business and financial matters; non-downloadable web-based publications in the nature of journals consisting primarily of periodic articles in the field of finance and business; providing news feeds as part of news reporters services; electronic publishing services, namely, publication of text, audio, video and graphic works of others online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; production of television news programs for broadcasting; On-line journals, namely, weblogs and blogs featuring business and finance; advisory, information and consultancy services relating to publication of reviews and critiques, publication of electronic books and journals on-line, providing non-downloadable on-line electronic publications in the nature of journals and books in the field of business and finance; Educational services, namely, conducting classes and seminars in the field of financial and business matters; training services in the field of financial and business matters; arranging and conducting of educational conferences, congresses, seminars, symposiums and training workshops all in the fields of business and finance,” are closely related to registrant’s services, namely, “Broadcasting of Television Programs,” “television and radio broadcasting services,” “providing access to a computerized database in the field of television programs, sports, news and entertainment, and allowing for interactive exchange of messages and information,” “providing access to a computerized database in the field of television and radio programs, sports, news and entertainment, and allowing for interactive exchange of messages and information,” and “providing television, cable, radio and satellite programming services used in the entertainment industry.”  Both parties offer audio and video broadcasting services, services for transmitting messages, and news programs.  Thus, the service are likely to be used by, and marketed towards, the same types of consumers.

In this case, since the applicant and the registrant have the similar marks, customers are likely to be confused and believe that the applicant’s goods and services emanate from the same source as the registrant’s goods and services. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i). 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

How to respond.  Click to file a response to this nonfinal Office action.    

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Kevon L. Chisolm/

Examining Attorney, Law Office 103

571-272-9270

kevon.chisolm@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 29, 2020 for

U.S. Trademark Application Serial No. 79272045

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kevon L. Chisolm/

Examining Attorney, Law Office 103

571-272-9270

kevon.chisolm@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 29, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”