To: | MIST (umair@hojkaqadeer.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86970365 - MIST - MIST.001TM |
Sent: | 7/26/2016 6:44:27 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86970365
MARK: MIST
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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: MIST
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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.
ISSUE/MAILING DATE: 7/26/2016
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 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.
LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)- partial refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4544951. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN: “Organizing, conducting and operating interscholastic tournaments; Organizing, conducting and operating academic tournaments; Organizing, conducting and operating expressive arts tournaments; Organizing, conducting and operating faith-based tournaments”
Applicant seeks to register the mark MIST for, inter alia, the following services:
Organizing, conducting and operating interscholastic tournaments; Organizing, conducting and operating academic tournaments; Organizing, conducting and operating expressive arts tournaments; Organizing, conducting and operating faith-based tournaments
Registrant registered the mark MIST for, inter alia, the following services:
Entertainment services, namely, arranging and conducting of competitions for multimedia entertainment content; Entertainment services, namely, conducting contests;
The following factors are the most relevant in this case: 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.
Here the marks are identical. Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
The services are legally identical as both provide tournaments or contests. See definition for tournaments (defines as “A series of contests in which a number of contestants compete and the one that prevails through the final round or that finishes with the best record is declared the winner.”) While applicant’s services as limited its tournaments to the field of expressive arts, faith and academics, registrant has not limited the field of the contests.
In view of the foregoing, registration is refused under Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal(s) to register, Applicant should note the following issue(s) and requirement(s) set forth below.
PARTIAL ABANDONMENT (advisory)
Organizing, conducting and operating interscholastic tournaments; Organizing, conducting and operating academic tournaments; Organizing, conducting and operating expressive arts tournaments; Organizing, conducting and operating faith-based tournaments;
The application will then proceed with the following goods and/or services in International Class 41 only
Providing after school educational programs for children in grades eight through twelve.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
CLOSING
If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney. For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.
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. §2.191; 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.
/Benji Paradewelai/
Trademark Attorney
Law Office 101
United States Patent and Trademark Office
Direct Dial: (571) 272-1658
Email: benji.paradewelai@uspto.gov (for informal inquiries)
http://www.uspto.gov (for filing Official responses)
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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.