To: | Virginia Investment Partnership (ip@dglegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85814023 - DOMINION - N/A |
Sent: | 4/22/2013 5:38:51 PM |
Sent As: | ECOM117@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 Attachment - 26 Attachment - 27 Attachment - 28 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85814023
MARK: DOMINION
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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: Virginia Investment Partnership
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID PARTIAL 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: 4/22/2013
SUMMARY OF ISSUES that applicant must address:
Refusal Under Section 2(d) Based on a Likelihood of Confusion – Partial Refusal as to “Entertainment in the nature of soccer games; Organization of soccer games”
Registration of the applied-for mark is refused as to “entertainment in the nature of soccer games; organization of soccer games” because of a likelihood of confusion with the marks in U.S. Registration No(s). 2922354, 3007031, 3007032, 3007033, 3008243, and 3371140. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration(s).
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.
Marks are Similar
Applicant’s mark is “DOMINION.”
The registered marks are “OLD DOMINION UNIVERSITY” and design, “OLD DOMINION UNIVERSITY,” “OLD DOMINION UNIVERSITY 1930” and design, and “OLD DOMINION ATHLEICS” and design.
In this case, “DOMINION” is the entirety of applicant’s mark. Accordingly, it is the dominant portion of applicant’s mark.
With respect to the registered marks, consumers would be unlikely to focus on the terms “UNIVERSITY,” “1930,” and “ATHLETICS” because “UNIVERSITY” appears to refer to the provider of the services and identify an type of entity, “1930” appears to merely describe registrant’s establishment date, and “ATHLETICS” appears to be highly descriptive or generic as applicants is, in fact, providing athletic services. The term “OLD DOMINION,” is, therefore, the dominant term in the registered marks.
The foregoing establishes that “DOMINION” or “OLD DOMINION” is the dominant portion of each mark. The attached Internet excerpt from the www.netstate.com website establishes that, when under English rule, the state of Virginia was designated a “dominion” and that its nickname became “The Old Dominion” (please also see the attached definitions). Because both applicant and registrant are in Virginia (and presumably provide services there), the terms “DOMINION” and “OLD DOMINION” in the marks appear to refer to or be suggestive of Virginia.
As a result of the shared wording in the marks, the marks appear similar and sound similar. Moreover, as discussed above, the overall commercial impressions are similar with each mark referring to Virginia. Therefore, it is likely that consumers would be confused as to the origin of applicant’s services.
Goods and/or Services are Related
The respective goods and/or services need only be related in some manner or the conditions surrounding their marketing be such that they will be encountered by the same consumers under circumstances that would lead to the mistaken belief that the goods and/or services originate from the same source. Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584, 1597 (TTAB 2012); TMEP §1207.01(a)(i); see On-line Careline Inc. v. Am. Online Inc., 229 F.3d at 1086, 56 USPQ2d at 1475; In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Each of the registrations covers organizing and conducting collegiate athletic competitions.
Applicant’s services include “entertainment in the nature of soccer games” and “organization of soccer games.”
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application has no restrictions as to nature, type, channels of trade, or classes of purchasers for applicant’s services identified above. Therefore, it is presumed that these services travel in all normal channels of trade and are available to the same class of purchasers. More specifically, it is presumed that applicant’s services encompass those in the registrations.
Doubt is Resolved in Favor of Registrant
Based on the foregoing, it is clear that the marks are similar and the goods and/or services are related. Therefore, registration is refused under Trademark Act Section 2(d).
TEAS Plus Advisory
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.
Partial Abandonment Advisory
The stated refusal applies only to certain services and does not bar registration of the mark as to the other services. If applicant does not respond to this Office action within the six-month period for response, the services that are the subject of the refusal will be deleted from the application. The application will then proceed only with the following services: entertainment services, namely, arranging and conducting of competitions for professional soccer teams; organizing and conducting athletic competitions and games in the field of professional soccer See 37 C.F.R. §2.65(a); TMEP §718.02(a).
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-9714
maureen.lott@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.