UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 8/19/2011

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Issues to be Addressed

n     Trademark Act Section 2(d) Refusal(s)

n     Trademark Act Section 2(e)(1) Refusal

n     Identification of Goods and Services

 

Trademark Act Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3773158, 3868059, 3039734, 3018910, and 3424094.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 or 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).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) 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 factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 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, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

 

Facts:

Applicant’s goods and services are the following:

 

 

 

Class 9 “Prerecorded DVD's containing television programs; downloadable television programming; downloadable software in the nature of a mobile application for viewing television programming on a mobile communication device;” Class 38: “Satellite television broadcasting; Satellite transmission services; Broadcasting programs via a global computer network; Video-on-demand transmission services; transmission of pay-per-view television and other audio, video, and audiovisual material; Streaming of audio and video material on the Internet, other computer networks, wireless networks and electronic communication networks; Electronic transmission of data via global computer networks, wireless networks and electronic communication networks;” and, Class 41: “Distribution of television programs for others; Television programming; Programming on a global computer network; Pay-per-view programming; Video-on-demand programming; Providing on-line interactive computer databases featuring television programming lists, schedules and related information; Providing on-line interactive computer databases in the field of entertainment, namely, television, movies and other digital images, audio, video and other multimedia content; providing a website featuring information about television programming.” 

 

 

 

 

 

The goods and services for Registration Nos. 3868059 ("AUDIENCE SCIENCE") and 3773158 ("AUDIENCESCIENCE") are:

 

 

 

Class 35: “Advertising and marketing; Advertising and promotion services and related consulting; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Business consultation and management regarding marketing activities and launching of new products; Business marketing services; Commercial information agencies; Conducting marketing studies; Cooperative advertising and marketing services by way of solicitation, customer service and providing marketing information via web sites on a global computer network; Creation of marketing tools designed to increase a client company's knowledge of customer needs, and its competitors' products and services, pricing, advertising strategy and sales strategy; Development of marketing strategies and concepts; Dissemination of advertising for others via an on-line communications network on the internet; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Statistical evaluations of marketing data;” Class 38: “Computer services, namely, providing on-line facilities for real-time interaction with other computer users concerning topics of general interest; Electronic exchange of data stored in databases accessible via telecommunication networks;” Class 39: “Storage services for archiving databases, images and other electronic data;” Class 42: “Computer service, namely, acting as an application service provider in the field of knowledge management to host computer application software for creating searchable databases of information and data; Computer service, namely, acting as an application service provider in the field of knowledge management to host computer application software for searching and retrieving information from databases and computer networks; Computer service, namely, acting as an application service provider in the field of knowledge management to host computer application software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Data mining; Data warehousing; Hosting the web sites of others on a computer server for a global computer network; Providing information at the specific request of end-users by means of telephone or global computer networks; Searching and retrieving information, sites, and other resources available on computer networks for others.”

 

 

 

These goods and services are related to those of the applicant because the “electronic exchange of data stored in databases accessible via telecommunication networks” overlaps/is identical to applicant’s “electronic transmission of data via global computer networks, wireless networks and electronic communication networks.”  In addition, the other goods and services of the applicant and registrant are related in that they are likely to emanate from the same source and/or be provided/marketed in connection with one another. Please see attached third-party registrations and information relating thereto, which is provided further below in this section. 

 

 

 

 

 

The goods for Registration No. 3039734 ("AUDIENCE WATCH") are:

 

 

 

“Software for analyzing the exposure patterns of audiences to television, radio, and other media; Software for analyzing the characteristics of media audiences; Software for assisting media planners in establishing programming and advertising schedules; and Software for assessing the competitive media entertainment environment.”

 

 

 

These goods are related to the goods/services of the applicant because they are likely to emanate from the same source and/or be used/provided/marketed in connection with one another.  Please see attached third-party registrations and information relating thereto, which is provided further below in this section.

 

 

 

Registrant's goods for Registration No. 3018910 ("AUDIENCE") are

 

 

 

“Computer software for the creation, management, distribution and display of multi-zone, multimedia content targeted for television, point of sale and point of purchase displays; and computer software for the creation and display of interactive Internet web pages.”

 

 

 

 

 

These goods are related to the goods/services of the applicant because registrant’s software, which is for, in part, the “display of….content for television…” encompasses and/or is identical to applicant’s “downloadable software in the nature of a mobile application for viewing television programming on a mobile communication device”.  In addition, the other goods/services of the applicant and registrant are related in that they are likely to emanate from the same source and/or be provided/marketed in connection with one another.  Please see attached third-party registrations and information relating thereto, which is provided further below in this section

 

 

 

Registrant’s services for Registration No. 3424094 (“AUDIENCE NETWORKS”) are

 

 

 

“on-line advertising services.”

 

 

 

Similarity of the Marks:

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

 

 

Both Applicant’s and Registrant’s marks contain the dominant literal element “AUDIENCE”  The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression; greater weight is given to that dominant feature in determining whether the marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b)(viii), (c)(ii).

 

The “AIDIENCE” is further emphasized in Applicant’s mark by appearing first in the term, prior to the other terms, which creates a visual break in the mark.  Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

The presence of design marks some of the Registrants’ marks is not sufficient to avoid a likelihood of confusion with the Applicant’s mark in this instance.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services; therefore, the word portion is normally accorded greater weight in determining whether marks are confusingly similar.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).

 

The word portions of the marks are nearly identical in appearance, sound and meaning.  The addition of the 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).

 

 

Comparison of the Goods and /or Services:

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

 

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, (see “Facts” section above), are of a kind that may emanate from a single source under a single mark.  See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

When the products and/or services of Applicant and Registrant(s) are further commercially related for purposes of a Section 2(d) analysis in that they share similar trade channels and a similar class of purchasers.  Prospective purchasers encountering the marks are likely to believe the goods and/or services emanate from a common source.  Confusion is likely.

 

Since the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of Applicant’s goods and/or services.  Therefore, pursuant to Trademark Act Section 2(d), Applicant’s mark is refused registration.

 

 

Prior Pending Applications Advisory:

 

The filing dates of pending Application Serial Nos. 77594767, 77656861, 85144753, and  85228609 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

Applicant should note the following additional ground for refusal.

 

Section 2(e)(1) Refusal – Mark Is Merely Descriptive

 

 

Registration is refused because the applied-for mark, AUDIENCE, merely describes a feature, characteristic and/or intended user of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

 

 

A mark is merely descriptive if it describes a characteristic or feature of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). 

 

 

In addition, a mark that describes an intended user or group of users of a product or service is merely descriptive.  E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).

 

 

Generally, a mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive.  TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant's services which in combination achieve no different status but remain a common descriptive compound expression”). 

 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

 

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services.   Specifically, the term “AUDIENCE” means “the persons reached by a book, radio or television broadcast, etc.” See attached dictionary definition from www.dictionary.com.  When this term is used in connection with applicant’s goods and/or services, they immediately indicate to consumers that the applicant’s goods and/or services are for use by and/or are provided to the persons reached by radio or television broadcasts and are provided by a company that provides programs to be broadcast over a radio/television station.  See applicant’s identification of goods and/or services which indicates that applicant’s goods and/or services are related to television programs, programming, and broadcasting. 

 

 

 

 

 

Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register.  See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).  Please see attached third party registrations indicating that the term “NETWORK” is treated descriptively for goods and/or services that are the same/similar to those of the applicant in this case. 

 

 

 

 

 

For the foregoing reasons, the proposed mark, AUDIENCE is refused registration because it is merely descriptive of the applicant’s goods and/or services under Trademark Act Section 2(e)(1).

 

 

 

 

 

Supplemental Register – Advisory:

 

 

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

 

 

 

If the Applicant chooses to respond to the refusal to register, the Applicant must also respond to the following Requirement:

 

Identification of Goods and Services Must Be Clarified

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Please see suggested identification below for specific wording that requires clarification.

 

Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

In addition, applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade. 

 

Applicant may adopt the following identification, if accurate.  Please note that bolded wording indicates a suggested addition(s)/amendment(s) to applicant’s current identification and wording with a line through it indicates language of which the examining attorney is suggesting deletion. 

 

Class 9:

 

Prerecorded DVD's containing television programs featuring {indicate subject matter of programs, e.g. sports}; downloadable television programming programs featuring {indicate subject matter of programs, e.g. sports} provided via a video on-demand service; downloadable software in the nature of a mobile application for viewing television programming on a mobile communication device.

 

Class 38:

 

Satellite television broadcasting; Satellite transmission services; Broadcasting programs via a global computer network; Video-on-demand transmission services; transmission of pay-per-view television and other audio, video, and audiovisual material; Streaming of audio and video material on the Internet, other global and local computer networks, wireless networks and electronic communication networks; Electronic transmission of data via global computer networks, wireless networks and electronic communication networks.

 

Class 41:

 

Distribution of television programs for others; Television programming; Programming on a global computer network; Pay-per-view telev5ision programming; Video-on-demand television programming; Providing on-line interactive computer databases featuring television programming lists, schedules and related information, namely, {specify exact type/nature of related information e.g. information relating to the production and distribution of television shows}; Providing on-line interactive computer databases in the field of entertainment, namely, television, movies and other digital images, audio, video and other multimedia content, namely, providing an on-line computer database in the field of distribution of television shows, movies and radio shows; providing a website featuring information about television programming.

 

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone :  (571) 270-1519

Fax. No. (571) 273-9110

Thomas.Manor@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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 8/19/2011 FOR

SERIAL NO. 85308397

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 8/19/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.