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: 9/18/2015

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

The trademark examining attorney has reviewed the trademark application identified above. Applicant must respond to all of the issues discussed below before the response deadline.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

AS TO PARTICULAR SERVICES IN CLASS 41

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3773103, as to particular services in class 41, discussed herein below.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration data.

 

In this case, applicant’s mark is Z5, for use on:

 

Educational services; training; entertainment; sporting and cultural activities; information relating to entertainment or education; leisure services; animal training; organization of competitions (education or entertainment); organization of exhibitions for cultural or educational purposes; booking of seats for shows, game services provided on-line from a computer network; gambling services

 

The registered mark is Z-5, used on:

 

Gambling services; wagering services; gambling and wagering services provided via a global or other wide area computer network or via telecommunications devices; entertainment in the nature of conducting horse races; entertainment services, namely, providing a web site featuring photographs, audio, video, and prose presentations featuring horse racing; providing information in the field of entertainment featuring horse races, horse racing and wagering on horse races; providing an online computer database in the field of entertainment featuring horse racing events and wagering on horse racing events

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the services. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v).  Additionally, the services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

SIMILARITY OF THE MARKS

 

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 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

In this case, applicant’s mark is similar to the registered mark in appearance, sound, meaning, connotation and commercial impression. Applicant’s mark Z5 is identical to the registered mark, but for the hyphen found in the registered mark. Consumers will not recall this element nor will they recognize it as identifying a different trademark.

 

Regarding the design elements in applicant’s mark, the registered mark is shown in standard characters. A mark in 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). For this reason, a mark presented in stylized characters or with a design element generally will not avoid likelihood of confusion with a mark in 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”). Because of this, applicant’s design elements cannot be relied-upon to help consumers differentiate its mark from the registered mark.

 

For these reasons, applicant’s mark is similar to the registered mark. When an applicant’s mark is similar to a registered mark, confusion is likely if applicant’s services are similar to the services on which the registered mark is used.

 

SIMILARITY OF THE SERVICES

 

The services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case some of applicant’s services are identical to and competitive with the services provided under the registered mark. This is in part because applicant has identified its services so broadly as to encompass a wide range of services, including the more specifically identified services on which the registered mark is used. This exceeds the requirement for similarity between the services.

 

Other services of applicant, like “Educational services” or “organization of exhibitions for cultural or educational purposes; booking of seats for shows” are not restricted as to subject matter and could include these services in relation to gambling, wagering and horse racing. “Educational services in the nature of classes on successful gambling on horse races” would be related to horse racing services because of the shared subject matter. From the current identification of services, applicant’s other services could be related by subject matter to the services on which the registered mark is used.

 

Based on the foregoing, applicant’s services are similar or related to the services on which the registered mark is used. Because applicant’s mark is similar to the registered mark and applicant’s services are also similar or related to the services on which the registered mark is used, applicant’s mark is likely to be confused with the registered mark and may not register.

 

Although the examining attorney has refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, then applicant must also respond to the following

 

DESCRIPTION OF THE MARK

 

Applicant must amend the description of the mark to be more accurate and concise.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applicant should adopt the following, if accurate:

 

The mark consists of the wording Z5 contained within a broken circle. The Z and the circle segments are shown in silver. The 5 is in red. All is on a black background.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01. Specifically, “clothing” and “headgear” are considered indefinite. The particular articles of clothing and headgear must be named. “Furs” could identify pelts or clothing. Therefore, these goods must be further identified, and re-classified if appropriate.

 

Generally, an 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. 

 

Applicant may adopt the following identification (proposed changes are shown in bold italics), if accurate:

 

Class 18

 

Fur pelts

 

Class 25

 

Clothing, namely shirts, dresses, slacks and kimono; footwear; headgear, namely hats, wimples and caps; shirts; leather or imitation leather clothing, namely shirts, dresses, slacks and kimono; belts; fur coats; gloves; scarves; neckties; hosiery; socks; slippers; beach, ski or sports footwear; underwear

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

Once an applicant expressly amends the identification of goods to delete a particular item, that item generally may not be reinserted in a later amendment.  TMEP §1402.06(a); see TMEP §1402.07(e).

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified.  See TMEP §1402.01. In class 41, when identifying educational services, the format of the services and the subject matter must be named. Similarly, “entertainment” and “cultural activities” are overly broad. The specific type of entertainment and cultural activities must be named. Other specific corrections for this class are shown below.

 

In class 43, the common American English for “day-nurseries” would be “day care centers.” Applicant must amend this wording to the common American English term for these services.

 

Generally, an 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 (proposed changes are shown in bold italics), if accurate:

 

Class 41

 

Educational services in the nature of classes in basic math and science; dog obedience training; entertainment in the nature of ballet performances; sporting and cultural activities in the nature of soccer matches and art exhibitions; information relating to entertainment or education; leisure services in the nature of conducting guided nature walks; publication of books; lending libraries; animal training; videotape film production; rental of motion pictures; rental of sound recordings; rental of video cassette recorders or of radio and television sets; rental of show scenery; videotape editing; photography services; organization of competitions for education or entertainment in the nature of spelling bees and sumo wrestling tournaments; organization and conducting of colloquiums, conferences or congresses in the field of cake baking, spelunking and ikebana; organization of exhibitions for cultural or educational purposes; booking of seats for shows, game services provided on-line from a computer network in the nature of online poker tournaments; gambling services, publication of electronic books and journals on-line; desktop publishing for others

 

Class 43

 

Food and drink catering; hotel services; temporary accommodation reservations; day care centers; services for providing food and drink; providing temporary accommodation; bar services

 

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

Once an applicant expressly amends the identification of goods and services to delete a particular item, that item generally may not be reinserted in a later amendment.  TMEP §1402.06(a); see TMEP §1402.07(e).

 

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.

 

ADDITIONAL CLASSES OF GOODS OR SERVICES 

 

The application identifies goods and services that are classified in at least 4 classes. However, applicant submitted fees sufficient for only 3 classes. In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fees for adding classes to a regular TEAS application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission.  See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

Applicant must list the goods and services by international class.  TMEP §§801.01(b), 1403.01.

 

RESPONSE GUIDELINES – TEAS RF APPLICANTS

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

In addition, applicant filed a TEAS RF application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to avoid incurring an additional fee.  See 37 C.F.R. §2.22(b)(1), (c). 

 

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(15), 2.66(b)(1).

 

If applicant has questions about this application or needs assistance in responding to this Office action, please contact the examining attorney at the telephone number below.

 

 

/Fred Carl III/

Examining Attorney

Law Office 108

571-272-8867 (direct phone)

571-273-8867 (fax)

fred.carl@uspto.gov *

 

* Email correspondence cannot be accepted as a response to an outstanding action. Please SPEAK with the examining attorney by telephone BEFORE attempting to send email.

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/18/2015 FOR U.S. APPLICATION SERIAL NO. 86650884

 

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 9/18/2015 (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.