Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 2/18/2015

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

At issue are two refusals made final in the Office action of July 18, 2014: a refusal under Trademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration Nos. 3760300 and 4225468, and a refusal under Trademark Act Sections 1 and 45 for failure to provide an acceptable specimen. 

 

The applicant has submitted an acceptable specimen with its request for reconsideration, and the refusal under Sections 1 and 45 is therefore withdrawn.  See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

The applicant has also presented arguments against the Section 2(d) refusal.  The examining attorney has considered these arguments carefully, but finds them unpersuasive.  Accordingly, the refusal to register the applicant’s mark based on a likelihood of confusion with the marks in Reg. Nos. 3760300 and 4225468 is maintained and continues to be final, and the applicant’s request for reconsideration is denied.  See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

The applicant does not dispute that the goods and services of the parties are related.  Indeed, the applicant’s services are the same as and essentially the same as the services listed in Registration No. 4225468.  The applicant’s entertainment services are also closely related to the goods listed in Registration No. 3760300, as it is a very common practice for musical performers to provide both live musical entertainment and compact discs or records featuring music. 

 

The applicant instead asserts that the marks at issue are different, and that the term DEATH is weak or diluted and thus registration of its mark is appropriate.

 

First, the only difference between the marks is that the applicant’s mark is presented in a stylized form and the registered marks are presented in standard characters.  While the applicant’s mark is highly stylized, this is not sufficient to distinguish the marks.  As previously noted, the literal element in each mark is identical—the word DEATH.  This identical term is the name that will be used in calling for the goods or services.  As the word portion of the marks is identical in appearance, sound, connotation, and commercial impression, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

More importantly, the marks of both the applicant and registrant identify a musical act named “Death.”  Consumers calling for the goods would use this term to identify the band, whether they are in search of live musical performances or recorded music.  Thus, even though the applicant’s mark includes stylization, this stylization is not sufficient to overcome the likelihood of confusion.  The examining attorney references the attached web pages, which show that it is not uncommon for the name of musical performers to be presented in both a specific stylized fashion, such as on the cover of albums, and in typed form.  Given this common practice, consumers encountering the term DEATH used in reference to a musical group will presume the name to apply to the same group, regardless of whether it is presented in typed or stylized form.

 

In addition, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

The examining attorney further notes that the specimen submitted with the applicant’s request for reconsideration itself uses DEATH in regular typed form in reference to its musical performances.  That is, in the applicant’s own usage, the band is referred to both solely by the literal element DEATH and the stylized mark in the present application.

 

The applicant further argues that registration is appropriate because DEATH is weak as applied to the relevant goods and services.  However, while DEATH may appear as a term in other registrations for similar goods or services, this is not dispositive on the issue of whether there is a likelihood of confusion in this case.  The registrations referenced by the applicant all have additional matter, and thus the overall commercial impression of each registered mark is different.  In contrast, the marks at issue in the present case are comprised solely of the literal element DEATH, with the only difference between the marks being that the registrant’s marks are presented in standard characters and the applicant’s is in stylized form.  As noted above, that difference is not sufficient to distinguish the marks, given that they are otherwise identical.  The existence of other, unrelated marks that share only the term DEATH does not change the finding that in the present case there is a likelihood of confusion.

 

Moreover, the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services.  In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974).  Thus, even if the term DEATH were to be considered weak, the applicant’s mark is highly similar to the registered mark and the goods and services of the parties are the same and closely related.  Accordingly, the refusal of registration under Section 2(d) is appropriate.

 

In the present case, applicant’s request has not resolved all of the outstanding issues, nor does it raise a new issue or provide any new or compelling evidence with regard to the Section 2(d) refusal in the final Office action.  In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues.  Accordingly, the request for reconsideration of the Section 2(d) refusal is denied.

 

If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(p)571-272-9430

(f) 571-273-9430

(e) kimberly.frye@uspto.gov

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/18/2015 FOR U.S. APPLICATION SERIAL NO. 85883636

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/18/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.