To: | World Wrestling Entertainment, Inc. (lauren.middlen@wwecorp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86421851 - WCW - N/A |
Sent: | 2/3/2015 12:40:58 PM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86421851
MARK: WCW
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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: World Wrestling Entertainment, 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.
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. 1785929 and 2964395. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant’s mark is WCW (in stylized form) for “Entertainment services, namely, a continuing program about sports and entertainment accessible by means of television, satellite, audio, video, web-based applications, mobile phone applications and computer networks; entertainment services, namely, television shows about sports, entertainment and general interest rendered live and through broadcast media including television and radio, and via the internet or commercial online service; entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through broadcast media including television and radio, and via the internet or commercial online service; entertainment services, namely on-going reality based television programs rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing entertainment and sports news and information via a global computer network or commercial online service; entertainment services, namely, provision of information and news about sports, entertainment and general interest rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing information in the fields of sports, entertainment and general interest via an online community portal; providing a website in the field of sports, entertainment and general interest; Providing online newsletters in the fields of sports entertainment; online journals, namely blogs, in the fields of sports entertainment; entertainment and educational services, namely, ongoing multimedia programs in the field of general human interest, distributed via various platforms across multiple forms of transmission media; providing entertainment information regarding ongoing television programs via a global computer network; production of television programs; production of multimedia programs” in International Class 041.
The mark in Registration No. 1785929 is WCW (in stylized form) for “entertainment services, specifically for the promotion and production of wrestling exhibitions” in International Class 041.
The mark in Registration No. 2964395 is WCW (in typeset form) for “Entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through the media of television; providing wrestling news and information via a global computer network” in International Class 041.
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.
Comparison of the Marks
In the present case, applicant’s mark is WCW (in stylized form) and the mark in Registration No. 1785929 is WCW (in stylized form). Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
With regards to the mark in Registration No. 2964395, marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
Applicant’s mark is WCW (in stylized form).
The mark in Registration No. 2964395 is WCW (in typeset form).
For the above reasons, the marks are confusingly similar.
Comparison of the Services
Applicant’s services are “Entertainment services, namely, a continuing program about sports and entertainment accessible by means of television, satellite, audio, video, web-based applications, mobile phone applications and computer networks; entertainment services, namely, television shows about sports, entertainment and general interest rendered live and through broadcast media including television and radio, and via the internet or commercial online service; entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through broadcast media including television and radio, and via the internet or commercial online service; entertainment services, namely on-going reality based television programs rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing entertainment and sports news and information via a global computer network or commercial online service; entertainment services, namely, provision of information and news about sports, entertainment and general interest rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing information in the fields of sports, entertainment and general interest via an online community portal; providing a website in the field of sports, entertainment and general interest; Providing online newsletters in the fields of sports entertainment; online journals, namely blogs, in the fields of sports entertainment; entertainment and educational services, namely, ongoing multimedia programs in the field of general human interest, distributed via various platforms across multiple forms of transmission media; providing entertainment information regarding ongoing television programs via a global computer network; production of television programs; production of multimedia programs” in International Class 041.
The services in Registration No. 1785929 are “entertainment services, specifically for the promotion and production of wrestling exhibitions” in International Class 041.
The services in Registration No. 2964395 are “Entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through the media of television; providing wrestling news and information via a global computer network” in International Class 041.
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.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant(s)’s more narrow identification.
For the above reasons the services are considered related for likelihood of confusion analysis.
Therefore, registration is refused on the principal register under Section 2(d) Likelihood of Confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Ownership of Cited Registrations
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 1785929 and 2964395.”
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Identification of Services is Indefinite
The identification of services is indefinite and must be clarified because the nature of the educational services must be specified. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Entertainment services, namely, a continuing program about sports and entertainment accessible by means of television, satellite, audio, video, web-based applications, mobile phone applications and computer networks; entertainment services, namely, television shows about sports, entertainment and general interest rendered live and through broadcast media including television and radio, and via the internet or commercial online service; entertainment services, namely, the production and exhibition of professional wrestling events rendered live and through broadcast media including television and radio, and via the internet or commercial online service; entertainment services, namely on-going reality based television programs rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing entertainment and sports news and information via a global computer network or commercial online service; entertainment services, namely, provision of information and news about sports, entertainment and general interest rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing information in the fields of sports, entertainment and general interest via an online community portal; providing a website in the field of sports, entertainment and general interest; Providing online newsletters in the fields of sports entertainment; online journals, namely blogs, in the fields of sports entertainment; entertainment services, namely, ongoing multimedia programs in the field of general human interest, distributed via various platforms across multiple forms of transmission media; educational services, namely, providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the field of {indicate subject matter or field of educational activity} ;providing entertainment information regarding ongoing television programs via a global computer network; production of television programs; production of multimedia programs, in International Class 041.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/Lyndsey Kuykendall, Esq./
Examining Attorney
Law Office 102
571-272-5995
Lyndsey.Kuykendall@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.