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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE:

 

On 8/5/2016, action on this application was suspended pending the disposition of U.S. Application Serial No. 79186345.  The referenced prior-pending application has since registered.  Therefore, registration is refused as follows.

 

Refusal - Section 2(d) – 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. 5168962 (PYRO for “Music players, namely, digital audio players; music software for mixing music, organizing and categorizing music, and creating playlists of music; downloadable computer application software for mixing music, organizing and categorizing music, and creating playlists of music; downloadable software in the nature of a mobile application for mixing music, organizing and categorizing music, and creating playlists of music; software applications for operating music players; software applications for manipulating, mixing and performance of music; downloadable electronic publications, namely, newsletters relating to music; downloadable digital music; electronic media devices, namely, digital media streaming devices, pre-recorded electronic media devices featuring music”, “Musical entertainment services, namely, providing non-downloadable on-line music; non-downloadable music-related electronic publications, namely, newsletters; non-downloadable prerecorded digital music; advisory and consulting services relating to music entertainment, music publications, and non-downloadable digital music; the provision of information relating to music entertainment, music publications, and non-downloadable digital music” and “Computer software design and development relating to music; software programming relating to music; maintenance of computer software relating to music; updating computer software relating to music; technical support for music software, namely, troubleshooting and diagnosing of music software problems, remote administration and management of music software; rental of music software; advisory and consulting services relating to computer software design and development relating to music, software programming relating to music, maintenance of computer software relating to music, updating computer software relating to music, and technical support for music software; the provision of information relating to computer software design and development relating to music, software programming relating to music, maintenance of computer software relating to music, updating computer software relating to music, and technical support for music software”.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

            A.         General Principles in Determining Likelihood of Confusion:

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 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.

 

B.               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 the present matter, the applicant has applied to register the mark PYRO and design.  The registrant has registered the mark PYRO in standard characters.  The marks are very similar based on applicant’s PYRO vs. registrant’s PYRO.  This is because these components are identical and the dominant portions of the mark. As such, the overall commercial impression of the marks is the same. 

 

            C.        Relatedness of the Goods and/or Services:

 

The applicant’s goods and/or services (“Electronic transmission and streaming of digital media content for others via global and local computer networks; Streaming of audio material on the Internet; Streaming of audio, visual and audiovisual material via a global computer network; Streaming of video material on the Internet; Streaming of audio and video material on the Internet” and “Disc jockey services; Entertainment services in the nature of live musical performance”) are related to the registrant’s goods and/or services (“Music players, namely, digital audio players; music software for mixing music, organizing and categorizing music, and creating playlists of music; downloadable computer application software for mixing music, organizing and categorizing music, and creating playlists of music; downloadable software in the nature of a mobile application for mixing music, organizing and categorizing music, and creating playlists of music; software applications for operating music players; software applications for manipulating, mixing and performance of music; downloadable electronic publications, namely, newsletters relating to music; downloadable digital music; electronic media devices, namely, digital media streaming devices, pre-recorded electronic media devices featuring music”, “Musical entertainment services, namely, providing non-downloadable on-line music; non-downloadable music-related electronic publications, namely, newsletters; non-downloadable prerecorded digital music; advisory and consulting services relating to music entertainment, music publications, and non-downloadable digital music; the provision of information relating to music entertainment, music publications, and non-downloadable digital music” and “Computer software design and development relating to music; software programming relating to music; maintenance of computer software relating to music; updating computer software relating to music; technical support for music software, namely, troubleshooting and diagnosing of music software problems, remote administration and management of music software; rental of music software; advisory and consulting services relating to computer software design and development relating to music, software programming relating to music, maintenance of computer software relating to music, updating computer software relating to music, and technical support for music software; the provision of information relating to computer software design and development relating to music, software programming relating to music, maintenance of computer software relating to music, updating computer software relating to music, and technical support for music software”) because both the applicant’s and registrant’s goods and services involve the provision of music to their consumers.

 

            D.        Conclusion:

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

            E.         Response Guidelines:

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Assistance

 

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.

 

 

 

Deirdre G. Robertson

/Deirdre G Robertson/

Trademark Examining Attorney

Law Office 111

Phone No. (571) 272-8806

deirdre.robertson@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.  

 

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/.

 

CHANGE OF CORRESPONDENCE ADDRESS:  Applicants may electronically file requests to change the correspondence address of up to twenty applications at one time.  TMEP §609.02(d).  The USPTO encourages applicants to use this time-saving form, available online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

TRADEMARK FEES:  Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper.  See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7).  Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements.  Id.  Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees.  See more information for an overview of the changes.  See the fee chart that lists all trademark fee changes.