To: | Home Box Office, Inc. (trademarks@hbo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85522724 - BANSHEE - Banshee clas |
Sent: | 4/25/2012 11:29:03 AM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85522724
MARK: BANSHEE
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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: Home Box Office, Inc.
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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: 4/25/2012
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal
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 Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of Marks
Therefore, applicant has appropriated the most significant feature of registrant’s mark and had made it the sole feature of its own mark. As such, the marks create similar overall commercial impressions. The fact that the marks can be distinguished in a side-by-side comparison is immaterial. The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Similarity of Goods
In the present case, applicant’s goods include an entry for “mouse pads”. Registrant’s goods are also for “mouse pads”. Thus, the goods, at least in part, are identical, and it is presumed that they move in all normal channels of trade and are available to all potential customers. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); TMEP §1207.01(a)(iii).
Accordingly, since at least one of the items in the identification of goods is identical, the identifications are considered related for purposes of likelihood of confusion.
Earlier Filed Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must respond to the requirement(s) set forth below.
The identification of goods is indefinite and must be clarified so that all items are identified by their common commercial names. In addition, each entry may be listed only once. Duplicate entries of the same item are not permitted. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Class 9: Pre-recorded DVDs, digital versatile discs and digital video discs featuring a dramatic television series; downloadable computer screen saver software; downloadable ring tones and ring backs available via a global computer network and wireless devices featuring content from or related to a dramatic television series; pre-recorded CDs, video tapes and DVDs featuring video clips, video shorts and promotional spots from or related to a dramatic television series; digital materials, namely, downloadable pre-recorded video files and graphics files for use in handheld wireless devices all featuring content from or related to a dramatic television series; video game software; computer game software; electronic and interactive electronic game software; computer game programs; computer game discs, cassettes and cartridges; headphones, earphones, ear buds; mouse pads; video game programs, electronic game programs, or interactive electronic game programs, all downloadable from the Internet featuring content from or related to a dramatic television series; prerecorded audio discs and compact discs featuring soundtracks from or relating to a dramatic television series; downloadable virtual goods, namely, computer programs featuring (specify nature or type of goods, e.g., weapons, aircraft) for use in online virtual environments, created for entertainment purposes; protective cases and fitted plastic films for covering laptop computers, tablet computers, smart phones, media players, hand-held electronic game devices, mobile phones, global positioning systems and personal digital assistants; sunglasses
Class 28: gaming devices, namely, gaming machines, slot machines and bingo machines with and without video output; machines for playing games of chance; hand-held video game device for use with external display screen
For assistance with identifying and classifying goods and/or 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.
Multiple Class Applications
(1) Applicant must list the goods and/or services by international class; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
/Russ Herman/
Attorney
Law Office 101
571-272-9172 (phone)
russ.herman@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.