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.

 

ISSUE/MAILING DATE: 8/22/2012

 

Upon further review of the application, an issue should have been addressed in addition to the prior pending application. Please see below. Further, the previously referenced prior pending application has since registered and registration is now refused under Section 2(d) of the Trademark Act.

 

Registration Refused Under Section 2(d) of the Trademark Act

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4176714. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

 

The applied-for mark is INDIVISIBLE for “Arranging and conducting canopy tours and zip line events for entertainment purposes; Arranging and conducting nightclub entertainment events; Arranging for ticket reservations for shows and other entertainment events; Arranging, organizing, conducting, and hosting social entertainment events; Booking of entertainment halls; Educational and entertainment services, namely, providing a volunteer program featuring recreational activities, literacy training, art events, and sporting events for children in foster care; Educational and entertainment services, namely, providing motivational and educational speakers; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational services, namely, conducting workshops in the field of black music; Entertainment and education services in the nature of live dance and musical performances; Entertainment and education services, namely, providing recognition and incentives by way of celebrations and awards to girls from underserved communities who have completed their high school careers successfully and who are going on to college; Entertainment and educational services in the nature of on-line competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; Entertainment and educational services, namely, providing advice and information for music, video and film concept and script development; Entertainment in the nature of a water park and amusement center; Entertainment in the nature of ballet performances; Entertainment in the nature of baseball games; Entertainment in the nature of basketball games; Entertainment in the nature of beauty pageants; Entertainment in the nature of boxing contests; Entertainment in the nature of circuses. Entertainment in the nature of dance performances; Entertainment in the nature of fashion shows; Entertainment in the nature of football games; Entertainment in the nature of gymnastic performances; Entertainment in the nature of hockey games; Entertainment information services, namely, providing information and news releases about a musical artist; Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of an amusement park attraction, namely, a themed area; Entertainment services in the nature of an amusement park show; Entertainment services in the nature of comedy shows; Entertainment services in the nature of conducting chess tournaments; Entertainment services in the nature of live musical performances; Entertainment services in the nature of organizing, arranging and conducting motorcycle riding excursions; Entertainment services in the nature of presenting live musical performances; Entertainment services in the nature of providing outdoor facilities for playing paintball; Entertainment services, namely, an on-line activity where you create your own music videos; Entertainment services, namely, arranging and conducting special events at an amusement park; Entertainment services, namely, arranging for ticket reservations for amusement park attractions; Entertainment services, namely, cabarets; Entertainment services, namely, cheerleading; Entertainment services, namely, conducting carnivals; Entertainment services, namely, conducting contests; Entertainment services, namely, conducting parties; Entertainment services, namely, conducting parties for the purpose of dating and social introduction for adults. Entertainment services, namely, contest and incentive award programs designed to reward program participants who exercise, make healthy eating choices, and engage in other health-promoting activities; Entertainment services, namely, dance events by a recording artist; Entertainment services, namely, fireworks displays; Entertainment services, namely, wine and food tastings; Entertainment services, namely, wine tastings; Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Entertainment, namely, live performances by musical bands; Live performances by a musical group; Music production services; Music video production; Organisation of fashion shows for entertainment purposes; Organization of exhibitions for musical entertainment; Organizing and arranging exhibitions for entertainment purposes; Planning arrangement of showing movies, shows, plays or musical performances; Post-production editing services in the field of music, videos and film; Presentation of musical performance; Production of musical sound recording; Production of musical videos; Production of sound and music video recordings.”

 

The registered mark is INDIVISIBLE for “Compact discs featuring music; Compact discs featuring music and spoken word in the form of poetry; Digital music downloadable from the Internet; Digital music systems that synchronizes digital radio files stored on a home unit, a car unit, or portable unit and that may be backed up to an internet depository; Downloadable musical sound recordings; Downloadable ring tones, graphics and music via a global computer network and wireless devices; Musical recordings; Musical sound recordings; Musical video recordings; Phonograph records featuring music; Visual recordings and audiovisual recordings featuring music and animation.”

 

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, 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).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court 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 the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 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.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

Comparing the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks 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).

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is INDIVISIBLE and registrant’s mark is INDIVISIBLE.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and services.

 

Therefore, the marks are confusingly similar. 

 

 

Continuing, the examining attorney must also consider the relationship between the goods and services of the respective parties carefully to determine whether there is a  likelihood of confusion.

 

Comparing the Goods/Services

 

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

The applicant’s services will be encountered by the same purchasers as those of the registrant’s goods. For example, musical group performances feature the same musicians who offer CDs. Please see the attached list of upcoming concert dates for several musicians. Also attached are screen captures of the same music groups’ and individual performers’ CDs. Thus, the goods and services are likely to be marketed to the same potential purchasers.  

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same goods and services as those of both applicant and registrant in this case.  This evidence shows that the goods and services listed therein, namely compact discs featuring music, musical sound recordings, presenting live musical performances, music concerts, producing sound recordings, and dance events, are of a kind that may emanate from a single source under a single mark.  See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

In closing, 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). Accordingly, confusion is likely and the mark is refused registration under Section 2(d) of the Trademark Act.

 

Ownership of Cited Registration

 

If the mark in the cited registration has been assigned to applicant, applicant may provide evidence of ownership of the mark by satisfying one of the following:

 

(1)  Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)  Submit copies of documents evidencing the chain of title.

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration No. 4176714.” 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

 

Entity of Applicant

 

Applicant appears to be a joint venture.  If so, applicant must identify the name of the joint venture and specify the state or country under whose laws the joint venture is organized.  37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(b).  In addition, U.S. joint ventures must also list the names, legal entities and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture.  37 C.F.R. §2.32(a)(3)(iv); TMEP §§803.03(b), 803.04.

 

If applicant is a U.S. joint venture, the application must be amended to identify the joint venture in the following format: 

 

“_____________________, a joint venture organized under the laws of _______________, composed of ______________ (specify name, legal entity, and citizenship of each individual active member; and/or name, legal entity, and state or country of incorporation or organization of each juristic active member).”

 

37 C.F.R. §2.32(a)(3)(iv); TMEP §§803.03(b), 803.04.

 

If applicant is a foreign joint venture, the application must be amended to identify the joint venture in the following format: 

 

“_____________________, a joint venture organized under the laws of _______________.”

 

37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b), 803.04.

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark 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 questions regarding this Office action, please email or telephone 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 §§304.01-.02, 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.

 

 

 

 

/Shannon Twohig/

Shannon Twohig

Attorney, USPTO

Law Office 105

shannon.twohig@uspto.gov

(571) 272-8855

 

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 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 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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85297146) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 8/22/2012 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 8/22/2012 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Shannon Twohig/

Shannon Twohig

Attorney, USPTO

Law Office 105

shannon.twohig@uspto.gov

(571) 272-8855

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.