To: | Lopez, Roberto (gabriel@losbondadosos.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85321027 - ROBERTO Y SU GRUPO EL TIEMPO - N/A |
Sent: | 8/30/2011 5:46:45 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85321027
MARK: ROBERTO Y SU GRUPO EL TIEMPO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Lopez, Roberto
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 8/30/2011
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
TRANSLATION REQUIREMENT
The following translation statement is suggested:
The English translation of “ROBERTO Y SU GRUPO EL TIEMPO” in the mark is “ROBERT AND HIS GROUP ‘THE TIME’ (OR ‘THE TIMES’).” (Applicant will translate accurately; this translation is a mere guess.)
TMEP §809.03.
REFUSAL 2(d) – CONFLICTING REGISTRATION
Likelihood of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity of the services, and similarity of trade channels of the services. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
Likelihood of Confusion – Two-part Analysis
Similarities of the Marks
Registrant’s mark consists of the words “EL TIEMPO” for Class 41 services as follows: “Entertainment in the nature of live performances by a musical group.” Applicant’s mark consists of the words “ROBERTO Y SU GRUPO EL TIEMPO” for Class 41 services, as follows: “Entertainment in the nature of live musical performances.”
It only takes a quick glance at the marks to see that applicant inadvertently created his mark by adding his name and “and his group” to registrant’s mark. It is interesting that both musical groups are performing in California in a Latino milieu.
The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii).
The Parties’ Services are Identical and Competing
Both parties have Latino names for entertainment services in the nature of live performances by a musical group. The services are exactly the same. Even the ethnic genre is the same.
If the services of the respective parties are “similar in kind and/or closely related,” 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).
In this case it would be an invitation to buyer confusion as to the source of the services to allow these two marks to co-exist on the Principal Register.
ADVISORY RE: LEGAL COUNSEL
Because of the legal technicalities involved in this application, applicant may wish to hire an attorney specializing in trademark or intellectual property law. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm or a local telephone directory. The USPTO cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
/Jill C. Alt/
Jill C.Alt, Examining Attorney
L.O. 114
Tel. 571-272-9444
jill.alt@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 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.