To: | Twentieth Century Fox Film Corporation (TM-CT@cantorcolburn.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85612440 - JAMES CAMERON'S AVATAR - FEG1324TUS |
Sent: | 8/23/2012 10:34:38 AM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85612440
MARK: JAMES CAMERON'S AVATAR
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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: Twentieth Century Fox Film Corporation
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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: 8/23/2012
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, 2.65(a); TMEP §§711, 718.03.
Likelihood of Confusion
The applicant applied to register JAMES CAMERON’S AVATAR for, “computer services in the field of providing on-line news and information via the Internet; providing on-line directories, databases, and search engines for obtaining data on a wide variety of topics and fields; hosting of digital content on the Internet, on-line journals and blogs.” The registered marks are all AVATAR for, “application service provider (ASP) featuring software for use in content development, instructional design, content input services, system customization, and web hosting services in the field of education management”(first registrant) and “computer services, namely, providing temporary use of nondownloadable computer software for use in recording, tracking, and reporting patient status, ambulatory notes, medical staff tasks, medical staff patient assignments, medical staff workflow management, bed availability status, nursing assessment information, patient diagnosis, patient treatment planning, patient progress notes and reports, and generating patient discharge instructions, all in the fields of behavioral health and mental health care; providing temporary use of nondownloadable computer software for use in the field of public health, namely, for tracking and providing data on public health related clinical assessments, clinical encounters, dental encounters, public health risks, disease monitoring and management, and plan of care information; providing temporary use of nondownloadable computer software for use in tracking and managing patient medical procedures and treatments, patient laboratory orders, patient medications, patient medical history, patient and insurance billing information, and for maintaining complete patient records, all in the fields of behavioral health, mental health care and public health; providing maintenance and repair of computer software for use in the fields of behavioral health, mental health care and public health; providing updates to computer software for use in the fields of behavioral health, mental health care and public health; technical support services, namely, troubleshooting of computer software problems for software used in the fields of behavioral health, mental health care and public health; installation of computer software for use in the fields of behavioral health, mental health care and public health.” Second and third registrant, owned by the same registrant).
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.
COMPARISON OF THE MARKS
In the present case, applicant’s mark JAMES CAMERON’S AVATAR is similar to the registered marks AVATAR because the applicant’s mark is simply the registered mark with the name JAMES CAMERON’S added to it. Despite this slight difference, the marks share the word AVATAR, and therefore look alike, sound alike, and have the same commercial impression.
COMPARISON OF THE SERVICES
Applicant’s “computer services in the field of providing on-line news and information via the Internet; providing on-line directories, databases, and search engines for obtaining data on a wide variety of topics and fields; hosting of digital content on the Internet, on-line journals and blogs” are related to the registrant’s services of for example, “providing temporary use of nondownloadable computer software for use in the field of public health, namely, for tracking and providing data on public health related clinical assessments, clinical encounters, dental encounters, public health risks, disease monitoring and management, and plan of care information” because the applicant’s database and search engines for obtaining data on a wide variety of topics and fields” encompasses a large array of different topics that could include education management (the subject matter of the first registrant’s software) and public health (the subject matter of the second and third registrant’s software). Accordingly, the services would be used by the same class of purchasers and encountered under circumstances leading one to believe the services originate from the same source.
Please see the attached Internet stories. These stories show that search engines allow one to search for information on a wide variety of topics.
http://webserach.about.com/od/medicalsites/tp/Web-Md-Search.htm
http://collegetimes.us/100-search-engines-for-business-students/
http://www.archives.gov/research/alic/tools/online-databases.html
Since the marks and the services are similar, there is a likelihood of confusion as to the source of the applicant’s services. Therefore, applicant’s mark is not entitled to registration.
Identification of Services
Providing an online video business directory, in class 35;
Providing a web site featuring temporary use of non-downloadable software for [specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, in a wide variety of topics and fields; computer services, namely, providing search engines for obtaining data on a wide variety of topics and fields; hosting of digital content on the Internet, namely online journals and blogs, in class 42.
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.
For applications filed before January 2, 2007, compliance with the Ninth Edition is optional; and any such applicants who opt to follow the Ninth Edition must advise the assigned trademark examining attorney. See TMEP §1401.11. The Office’s online Acceptable Identifications of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, has been updated to reflect the classification changes in the Ninth Edition. See TMEP §1402.04.
Insufficient Fee
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
The filing fees for adding classes to an application are as follows:
(1) A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).
(2) A $375 fee per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).
Particular Wording too Broad
Telephone for Clarification Recommended
/Inga Ervin/
Inga Ervin
Law Office 111
571 272-9379
571-273-9379 (fax)
Inga.Ervin@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.