To: | Twentieth Century Fox Film Corporation (tm@fox.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87012729 - SPEECHLESS - 81334132 |
Sent: | 7/28/2016 8:49:44 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87012729
MARK: SPEECHLESS
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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: Twentieth Century Fox Film Corporation
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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: 7/28/2016
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.
Summary of Issues
The following is a summary of issues:
(1) Likelihood of Confusion – Refusal to Register under Section 2(d)
Likelihood of Confusion – Refusal to Register under Section 2(d)
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4931348. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Similarities of the Marks
The applicant’s mark is SPEECHLESS. The registrant’s mark is SPEECHLESS.
The marks are identical.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services and the Channels of Trade
The respective goods and/or 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 goods and/or 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).
The Applicant’s goods are “Pre-recorded DVDs featuring drama; downloadable television shows and video recordings featuring drama; mousepads; decorative magnets; eye glasses” in Class 9.
The registered services are “Entertainment services, namely, live improvisational and interactive comedy shows and performances; Live improvisational and comedy presentations; Educational services, namely, conducting public speaking and presentation trainings and workshops for professionals and the general public.”
Consumers are likely to believe that a single entertainment entity/company would make both dramatic shows/DVDs and also improvisational/comedy shows/performances.
The Examining Attorney has attached several examples of single trademark/service marks that feature both live comedy and drama/dramatic television programs. See attached.
The Examining Attorney has attached an article about improvisational comedians/actors that have gone on to successful drama televisions show. See http://www.mtv.com/news/1567098/steve-carell-will-ferrell-seth-rogen-others-reveal-magic-behind-improv-comedy/ (attached), which discusses and has quotes from famous actors like Steve Carell, Will Ferrell and Seth Rogen. Steve Carell is an American actor, comedian, director, producer and writer. After a five-year stint on The Daily Show with Jon Stewart [featuring improvisational skits and comedy], Carell found greater fame for playing Michael Scott on the American version of The Office [a dramatic – and funny – television show]. See attached Wikipedia entry (as needed). Consumers e.g. television watchers (a.k.a. the general public) would be familiar with examples of improve/comedic stars who then went on to be the lead/star of drama television programs/movies/entertainment shows. Another example would be Eddie Murphy (mentioned in the magic-behind-improv-comedy article – attached).
The similarities among the marks and the goods/services are so great as to create a likelihood of confusion among consumers.
Accordingly, the mark is refused registration on the Principal Register under Section 2(d).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Gina M. Fink/
Trademark Examining Attorney, Law Office 109
Phone: (571) 272-9275
Law Office 109 Fax: (571) 273-9109
gina.fink@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.