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: 6/29/2016

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

 

 

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. 2948665, 4385817, 4324925, 4328760, 4157141, 4157142, 4495407, and 4495408.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is “AMA” in standard character form for “entertainment services, namely online non-downloadable videos of individuals responding to interview-style questions on the subjects of lifestyles, social issues, politics, foreign affairs, popular culture, the arts, humor, fiction, and literature” in International Class 041.

 

Reg. No. 2948665 is for “AMA AMERICAN MANAGEMENT ASSOCIATION” in a stylized form for “educational services; namely, providing courses and workshops, live and on video, in business management” in International Class 041.

 

Reg. No. 4385817 is for “AMA” in standard character form for “educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management” in International Class 041.

 

Reg. No. 4324925 is for “AMA ENTERPRISE” with a design element for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.

 

Reg. No. 4328760 is for “AMA AMERICAN MANAGEMENT ASSOCIATION ENTERPRISE” with a design element for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.

 

Reg. No. 4157141 is for “AMA TV” in standard character form for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.

 

Reg. No. 4157142 is for “AMA TV” with a design element for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.

 

Reg. No. 4495407 is for “AMA ON DEMAND” in standard character form for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.

 

Reg. No. 4495408 is for “AMA ON DEMAND” with a design element for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.

 

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 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 any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the services.  In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (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).

 

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.

 

Comparison of the Marks

 

Turning to the first prong of the test, a comparison must be made between the applied-for mark “AMA” in standard character form and the following registered marks:

 

Reg. No. 2948665 for “AMA AMERICAN MANAGEMENT ASSOCIATION” in a stylized form;

 

Reg. No. 4385817 for “AMA” in standard character form;

 

Reg. No. 4324925 for “AMA ENTERPRISE” with a design element;

 

Reg. No. 4328760 for “AMA AMERICAN MANAGEMENT ASSOCIATION ENTERPRISE” with a design element;

 

Reg. No. 4157141 for “AMA TV” in standard character form;

 

Reg. No. 4157142 for “AMA TV” with a design element;

 

Reg. No. 4495407 for “AMA ON DEMAND” in standard character form; and

 

Reg. No. 4495408 for “AMA ON DEMAND” with a design element.

 

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).

 

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Truimph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 ( (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013));TMEP §1207.01(b).

 

In the present case, applicant’s mark and the mark for Reg. No. 4385817 are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, Llc, 116 USPQ2d 1406, 1411 (TTAB 2015).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  In re i.am.symbolic, Llc, 116 USPQ2d at 1411. Therefore, the marks are confusingly similar. 

 

The fact that Reg. Nos. 4324925, 4157142, and 4495408 contain design elements does not obviate the likelihood of confusion between the applied-for mark and the registered marks. For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the dominant portion of the registered marks is the wording, which is similar to the applied-for mark “AMA.”

 

The applied-for mark “AMA” is identical to the first term in all of the registered marks. 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); 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). Thus, when looking at the applied-for and registered marks, consumers are likely to focus on the similar term “AMA,” which is likely to lead to confusion among consumers.

 

Even though some of the registered marks contain wording in addition to “AMA,” the dominant portion of the marks is “AMA” because other matter has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). In Reg. Nos. 2948665 and 4328760, the word “ASSOCIATION” has been disclaimed resulting in the dominant wording “AMA AMERICAN MANAGEMENT,” as well as the word “ENTERPRISE” in Reg. No. 4328760.  In Reg. Nos. 4157141 and 4157142, “TV” has been disclaimed, resulting in the dominant portion being “AMA.” In Reg. Nos. 4495407 and 4495408, “ON DEMAND” has been disclaimed, resulting in the dominant portion “AMA.”

 

Reg. Nos. 4324925 and 4328760 contain the word “ENTERPRISE,” however, this word is defined by the American Heritage Dictionary as “a business organization” and is therefore descriptive and does not serve as a source identifier. Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity.  TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.  Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). Thus, “AMA” and “AMA AMERICAN MANAGEMENT” are the dominant elements of the respective marks.

 

The applied-for mark “AMA” is entirely incorporated in the registered marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); Hunter Indus., Inc. v. Toro Co., 110 USPQ2D 1651, 1660-61 (TTAB 2014) (finding PRECISION and PRECISION DISTRIBUTION CONTROL confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Accordingly, the marks are confusingly similar in their entireties when giving each feature of the marks their appropriate weight.

 

Comparison of 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).

 

Applicant’s mark is for “entertainment services, namely online non-downloadable videos of individuals responding to interview-style questions on the subjects of lifestyles, social issues, politics, foreign affairs, popular culture, the arts, humor, fiction, and literature” in International Class 041.

 

Reg. No. 2948665 is for “educational services; namely, providing courses and workshops, live and on video, in business management” in International Class 041.

 

Reg. No. 4385817 is for “educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management” in International Class 041.

 

Reg. No. 4324925 is for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.

 

Reg. No. 4328760 is for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.

 

Reg. No. 4157141 is for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.

 

Reg. No. 4157142 is for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.

 

Reg. No. 4495407 is for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.

 

Reg. No. 4495408 is for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.

 

Notably, applicant offers online non-downloadable videos and registrants offer videos or broadcasting of videos.

 

The attached Internet evidence consists of third-party service providers.  This evidence establishes that the same entity commonly manufactures/produces/provides the relevant services and markets the services under the same mark and the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

• YouTube
• • Courses - http://www.youtube.com/user/crashcourse; http://www.youtube.com/user/stanfordbusiness/videos; http://www.youtube.com/channel/UCRTA705R4mtPNLhpqyAl05w/playlists?sort=dd&view=50&shelf_id=16324107727928031069
  • Interview videos - http://www.youtube.com/user/CharlieRose; http://www.youtube.com/user/MarkMolaro/videos 
• Lynda.com
• • Online videos in business, art, technology - http://www.lynda.com/
• Harvard
• • Online videos in literature, politics, and math - http://www.extension.harvard.edu/open-learning-initiative
  • Business videos - http://www.harvardbusiness.org/video-and-audio
  • Required Curriculum - http://www.hbs.edu/mba/academic-experience/curriculum/Pages/required-curriculum.aspx
  • Seminars and Conferences - http://www.hbs.edu/faculty/Pages/seminars-and-conferences.aspx?view=past
• CBS
• • Broadcasting - http://www.cbs.com/; http://www.cbscorporation.com/about-cbs/
  • Shows and videos featuring interviews concerning business, politics, entertainment, and current events - http://www.cbs.com/shows/60_minutes/video/SMTlESxpU729IvKWWlDWqlibkjL3FLNP/strike-through-fintech-the-children-s-village/; http://www.cbs.com/shows/cbs_evening_news/video/YcTICTyyNtaSM8DaQaRFO; http://www.cbs.com/shows/cbs_this_morning/about/Cnr6aCJHqBq/6-24-britain-votes-to-leave-european-union-alabama-college-student-comes-out-after-orlando-attacks/
• ABC
• • Broadcasting - http://abc.go.com/info; http://abc.go.com/shows/jimmy-kimmel-live
  • Shows and videos featuring interviews concerning lifestyle, entertainment, news, and finance - http://abc.go.com/shows/jimmy-kimmel-live/about-the-show; http://abc.go.com/shows/jimmy-kimmel-live; http://abc.go.com/shows/the-chew/about-the-show; http://abc.go.com/shows/the-chew/video/pl55492969/vdka0_ttxvhuil; http://abc.go.com/shows/good-morning-america
• NBC
• • Broadcasting - http://www.nbc.com/; http://www.nbcuniversal.com/our-history
  • Shows and video featuring interviews concerning pop culture, politics, news, and business - http://www.nbc.com/the-tonight-show/filters/video; http://www.nbc.com/meet-the-press; http://www.nbc.com/meet-the-press/video; http://www.nbc.com/nbc-nightly-news; http://www.nbcnews.com/business
• Fox Business
• • Videos - http://video.foxbusiness.com/v/4985397819001/uk-may-still-prosper-after-leaving-eu--/?#sp=show-clips; http://www.foxbusiness.com/politics.html;
  • Broadcasting - http://www.foxbusiness.com/fbntv/schedule.html; http://www.foxbusiness.com/shows.html
• CNBC
• • Broadcasting - http://www.cnbc.com/tv/
  • Videos featuring business and politics,  - http://www.cnbc.com/us-video/; http://www.cnbc.com/top-video/; http://www.cnbc.com/video-analyst-interviews/  
• Stanford Business School
• • Courses - http://www.gsb.stanford.edu/programs/mba/academic-experience/curriculum; http://www.gsb.stanford.edu/stanford-gsb-experience/academic/entrepreneurship/management-courses
  • Online videos - http://www.gsb.stanford.edu/insights/ten-popular-business-videos-2014
  • Online course - http://www.gsb.stanford.edu/newsroom/school-news/stanfords-new-online-course-cultivating-entrepreneurial-mindset

 

 

Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).

 

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

 

 

 

RESPONSE GUIDELINES

 

For this application to proceed further, 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 for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

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 and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

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).

 

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.

 

 

 

 

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 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. 

 

 

 

/Tricia L. Brown/

Examining Attorney

Law Office 121

(571) 270-7892

tricia.brown@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/29/2016 FOR U.S. APPLICATION SERIAL NO. 86944696

 

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 6/29/2016 (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.