UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85188725
MARK: DIRECTV CO-PILOT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: DIRECTV, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO:
CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/PRIORITY ACTION
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.
ISSUES APPLICANT MUST ADDRESS: On March 15, 2011, the trademark examining attorney and Takehiko Suzuki discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Likelihood of Confusion – Section 2(d) Refusal
Similarity of Marks
Applicant’s mark is “DIRECTV CO-PILOT”. Registrant’s mark is “FOG CREEK COPILOT”.
The marks are similar because they both contain the word “CO-PILOT” or a variant spelling thereof, i.e. “COPILOT”.
If the services of the respective parties are “similar in kind and/or closely related,” as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Please see Similarity of Services section below evidencing the identical/overlapping nature of applicant’s services with respect to the registrant’s services in this case.
Accordingly, the relevant marks are sufficiently similar to support a finding of likelihood of confusion.
Similarity of Services
Applicant’s services are “telecommunications services”.
Registrant’s services are “providing telecommunications connections between two computers to enable users to help their friends, colleagues and family fix computer problems remotely through the Internet.”
Because applicant’s telecommunications services have not been limited to include a particular type of telecommunications service(s), they encompass registrant’s more specific telecommunications service.
Accordingly, based on the similarity of the marks and the relationship of the services, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant has the option to respond to the refusal to register by submitting evidence and legal arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement.
Identification of Services Must Be Clarified
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the exact nature/type of its telecommunications services.
Applicant may adopt the following identification, if accurate. Please note that bolded wording indicates a suggested addition(s)/amendment(s) to applicant’s current identification.”
Class 38:
“Telecommunications services, namely, {insert specific type/nature of service(s), e.g. electronic transmission of data}.”
Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
For assistance with identifying and classifying 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.
APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707.
Ownership of Prior Registrations
The following claim of ownership is added to the record:
Applicant is the owner of U.S. Registration Nos. 2639279, 3051286, 3382802 and others.
See 37 C.F.R. §2.36; TMEP §812.
RESPONDING TO THIS OFFICE ACTION
The response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). In addition, the proper signatory must personally sign or personally enter his/her electronic signature. See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.
The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
If applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.
/Meghan Reinhart/
Trademark Examining Attorney
Law Office 108
Phone - (571) 272-2943
meghan.reinhart@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/teas/eTEASpageD.htm. Please wait 48-72 hours from the issue/mailing date before using 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 examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.