To: | RealD Inc. (uspto-tm-oc@sheppardmullin.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85950815 - LUXE - 23TY-154436 |
Sent: | 9/9/2014 2:22:04 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85950815
MARK: LUXE
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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: RealD Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 9/9/2014
On February 12, 2014, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 85945390 and 85942189. The following prior-pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark: Application Serial No. 85942189. However, the following prior-pending application has since registered: Application Serial No. 85945390. Therefore, registration is refused as follows.
In addition, registration is refused based on a likelihood of confusion with the mark in U.S. Registration No. 3481962.
The refusal based on a likelihood of confusion with the mark in U.S. Registration No. 4077904 is maintained and continued.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4077904. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. This refusal is maintained and continued.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the 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.
Registration Nos. 3481962 and 4569605
Registrant owns the mark LUX LEVEL and LUXLITE. Applicant has proposed the mark LUXE.
The marks create a highly similar commercial impression.
Registrant uses the marks for “Providing facilities for entertainment services in the nature of motion pictures presentations and live performances; movie theaters.” Applicant intends to use the mark for “Cinema theaters; motion picture theaters; movie theaters; providing facilities for video, cinema, video game and photography productions featuring premium large format cinematic and motion picture theater facilities, equipment and apparatus.”
Applicant and registrant’s both offer movie theater services. The services are identical in part and otherwise closely related.
When confronted with identical services bearing highly similar marks, a consumer is likely to have the mistaken belief that the services originate from the same source. Because this likelihood of confusion exists, registration must be refused.
Registration No. 4077904
Registrant own the mark ULTRALUXE. Applicant has proposed the mark LUXE.
Registrant uses the mark for “Movie theater services.” Applicant intends to use the mark for “Cinema theaters; motion picture theaters; movie theaters; providing facilities for video, cinema, video game and photography productions featuring premium large format cinematic and motion picture theater facilities, equipment and apparatus.”
Applicant and registrant’s both offer movie theater services. The services are identical in part and otherwise closely related.
When confronted with identical services bearing highly similar marks, a consumer is likely to have the mistaken belief that the services originate from the same source. Because this likelihood of confusion exists, the refusal to register must be maintained and made final.
/Kristina Morris/
Examining Attorney
Law Office 116
571-272-5895
kristina.morris@uspto.gov (informal queries only)
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.