To: | Perseverance Holdings Ltd. (docketing@finnegan.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85883636 - DEATH - 12285.0006 - Request for Reconsideration Denied - Return to TTAB |
Sent: | 2/18/2015 8:46:28 AM |
Sent As: | ECOM113@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
U.S. APPLICATION SERIAL NO. 85883636
MARK: DEATH
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Perseverance Holdings Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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an acceptable specimen with its request for reconsideration, and the refusal under Sections 1 and 45 is therefore withdrawn.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