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: 5/16/2017

 

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:

 

• Section 2(d) Likelihood of Confusion Refusal
• Section 2(e)(4) Primarily Merely a Surname Refusal
• Foreign Registration
• Identification of Goods and Services

 

 

Likelihood of Confusion – Section 2(d) Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2051121.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); 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 goods and/or 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 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).

 

 

Applicant’s mark is “MARLOWE”. 

 

 

Registrant’s mark is “MARLOWE & COMPANY”. 

 

 

The marks are similar because they both begin with or consist entirely of the wording “MARLOWE”.

 

 

Please note that the mere deletion of wording, such as “& COMPANY”, from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.

 

 

Accordingly, the relevant marks are sufficiently similar to support a finding of likelihood of confusion.

 

 

Similarity of Goods and Services

 

The goods and/or 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 goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).

 

 

Applicant’s goods/services are as follows:

 

“Recordings of sounds and images; carriers of audio signals and-or video signals; recordings of ?lms and television programmes; recordings of sound and music; downloadable sound and music recordings; downloadable audio books; audio-video cassettes; audio-music cassettes; compact discs; DVDs; phonograph records; CDROMs; computer games software; computer games; video recordings; downloadable video recordings; downloadable electronic publications provided on-line from databases or the Internet; electronic publications in any media; screensavers; cartridges for television game sets; laser disks; mouse mats; parts and ?ttings for the aforesaid goods; entertainment software; interactive entertainment software; computer games entertainment software; audio books;” “Printed matter; photographs; stationery; instructional and teaching material; writing implements; publications; books; magazines; journals; posters; prints; show programmes; stickers; table linen of paper; table mats of paper; table napkins of paper; booklets relating to games; printed matter including rule books and score cards for use with games; parts and ?ttings for the aforesaid goods;” “sporting and cultural activities; electronic games services provided by means of the internet; the provision of on-line electronic publications;  publishing of periodical and non-periodical publications including publicity texts;  production of audio and music recordings; dvd and cd-rom audio and music production; television, radio and ?lm production; DVD and CD-ROM ?lm production; production of audio-visual recordings; provision of entertainment services through the media of publications; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; provision of entertainment services through the media of cine-?lms; radio and television entertainment services; entertainment in the form of television programs (services providing -); provision of entertainment services through the media of video-?lms; entertainment services for sharing audio and video recordings; publishing of electronic books and journals online; publishing of magazines in electronic form on the internet; publishing services (including electronic publishing services); publishing of books; publication of audio books.”

 

 

Registrant’s goods are as follows:

 

“full line of books, namely [childrens'] *children's* books, fiction books, and non-fiction books featuring entertainment, the arts, music, science fiction, biographies, autobiographies, politics, history, religion, cooking, gardening, sports, money and investing, computers, travel, reference/writing, language/humor, African American interests and comic strip anthologies.”

 

 

These goods/services are (1) identical/overlapping (e.g. applicant’s printed matter encompasses all of registrant’s goods) and/or (2) highly related in that they are likely to emanate from the same source and/or be provided/marketed in connection with one another.   

 

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely (1) books and (2) recordings, cassettes, CDs, DVDs, computer games, laser disks, mouse mats, software, photographs, stationery, writing implements, posters, printed matter, napkins, sporting activities, cultural activities, publishing services, production services and/or entertainment services, are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

 

Accordingly, based on the similarity of the marks and the relatedness of the goods/services, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant has the option to respond to the refusal to register by submitting evidence and legal arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following refusals/requirements.

 

Section 2(e)(4) Refusal – Mark is Primarily Merely a Surname

 

Registration is refused because the applied-for mark, MARLOWE, is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

“The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public.”  In re Integrated Embedded, 120 USPQ2d 1504, 1505 (TTAB 2016) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); see In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); TMEP §1211.01.

 

The following five inquiries are often used to determine the public’s perception of a term’s primary significance:

 

(1)       Whether the surname is rare;

 

(2)       Whether anyone connected with applicant uses the term as a surname;

 

(3)       Whether the term has any recognized meaning other than as a surname;

 

(4)       Whether the term has the structure and pronunciation of a surname; and

 

(5)       Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

 

In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985). 

 

These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination.  In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01.  For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry.  In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.

 

“There is no rule as to the kind or amount of evidence necessary to show that [a] mark would be perceived as primarily merely a surname.”  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016); see TMEP §1211.01.  Each case is decided on its own facts, based on the evidence of record.  TMEP §1211.01; see In re Eximius Coffee, LLC, 120 USPQ2d at 1278 (citing In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985)). 

 

The following are examples of evidence that is generally considered to be relevant to such a determination:  telephone directory listings, excerpted listings and articles from computerized research databases, applicant’s website, evidence in the application record showing the term used as a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term.  See TMEP §1211.02(b)(i)-(b)(iii), (b)(v)-(b)(vi).

 

In this case, please see the attached evidence from www.lexis.com, establishing the surname significance of “MARLOWE”.  This evidence shows the applied-for mark appearing 13,478 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers. 

 

 

(1)   Rarity of Surname

 

Based on the number of times that “MARLOWE” appears as a surname, namely, 13,478 times, it does not appear to be a rare surname.

 

 (2)   Anyone Connected with Applicant Using Term as a Surname – Additional Information Required

It is not clear from the present record whether anyone connected with applicant uses the term “MARLOWE” as a surname.  Therefore, applicant must indicate whether there is anyone connected with applicant that has the surname “MARLOWE”.  

Failure to comply with a request for information is grounds for refusing registration.  In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008), In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003), TMEP §814). 

 

(3)   Any Recognized Meaning of Term Other Than as a Surname

 

Evidence that a term has no recognized meaning or significance other than as a surname is relevant to determining whether the term would be perceived as primarily merely a surname.  See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); In re Petrin Corp., 231 USPQ 902, 903 (TTAB 1986); TMEP §1211.02(b)(vi).  The attached evidence from www.macmillandictionary.com and www.columbiagazetteer.org shows that “MARLOWE” does not appear in the dictionary or the gazetteer.  Thus, this term appears to have no recognized meaning or significance other than as a surname. 

 

 

(4)   Does Term Have Structure and Pronunciation of a Surname

Evidence that a term has the structure and pronunciation of a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); see In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); TMEP §1211.01(a)(vi).  In this case, the mark “MARLOWE” both looks and sounds like a surname.  See attached webpage evidence from www.lexis.com evidencing that other surnames, namely, “HARLOWE” and “PARDO”, have a similar look and/or sound, namely, a two syllable term with the first syllable ending in “AR” and second syllable being pronounced as “O”. 

 

(5)   Is Term Sufficiently Stylized to Remove its Primary Significance from that of a Surname

Applicant’s mark is a standard character mark and may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display.  TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a).  Therefore, this particular element does not apply to the current application, because there is no stylization that could remove the primary significance of the term.

 

Therefore, for the reasons set forth above, the term “MARLOWE” is primarily merely a surname under Trademark Act Section 2(e)(4).

 

 

Supplemental Register

 

A mark in an application under Trademark Act Section 1(b), such as applicant’s, is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Please note that, while a successful amendment to the Supplemental Register would overcome the Section 2(e)(4) refusal, it would not overcome the Section 2(d) refusal. 

 

 

Foreign Registration

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

Identification of Goods/Services Must Be Clarified

 

Wording in the identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Please see suggested identification below for specific wording that requires clarification.  In addition, the parentheses around the wording “services providing -” and “including electronic publishing services” in the identification of goods and/or services must be deleted because the use of parentheses in an identification of goods and/or services is not generally acceptable.  See TMEP §1402.12. 

 

 

Applicant may adopt the following identification, if accurate.  Please note that bolded wording indicates a suggested addition(s)/amendment(s) to applicant’s current identification and wording with a line through it indicates language of which the examining attorney is suggesting deletion.  In addition, please note that the bracketed entries below require applicant to insert information. 

 

Class 9:

 

“Recordings of sounds and images, namely, {insert specific type/nature of Class 9 recordings, e.g. musical sound and video recordings}; carriers of audio signals and-or video signals, namely, {insert specific type/nature of Class 9 carriers, e.g. prerecorded magnetic data carriers featuring music}; recordings in the nature of pre-recorded video discs, video recordings and video tapes featuring of ?lms films and television programmes; recordings of sound and music, namely, musical sound recordings; downloadable sound and music recordings, namely, downloadable musical sound recordings; downloadable audio books in the field of {indicate subject matter}; blank audio-video cassettes; pre-recorded audio-music cassettes; compact discs featuring {indicate subject matter}; DVDs {indicate subject matter}; phonograph records featuring {indicate subject matter}; blank CDROMs for sound or video recording; computer games software; computer games game programs; video recordings featuring {specify subject matter, e.g., music, self-improvement help, mathematics instruction}; downloadable video recordings featuring {specify subject matter, e.g., music, self-improvement help, mathematics instruction}; downloadable electronic publications, namely, {insert specific type/nature of publications, e.g. magazines and books} provided on-line from databases or the Internet all in the field of {insert subject matter}; electronic publications in any media, namely, {insert specific type/nature of publications, e.g. magazines and books} in the field of {insert subject matter}; screensavers in the nature of computer screen saver software; video game cartridges for television game sets; laser disks  featuring {indicate subject matter}; mouse mats; parts and ?ttings fittings for the aforesaid goods, namely, {insert specific type/nature of Class 9 parts and fittings}; entertainment software for {insert purpose/function of software, e.g. allowing web site users to upload, post and display online videos for sharing with others}; interactive entertainment software for {insert purpose/function of software, e.g. allowing web site users to upload, post and display online videos for sharing with others}; computer games entertainment software; audio books in the field of {indicate subject matter}.”

 

Class 16:

 

“Printed matter, namely, {insert specific type/nature of Class printed matter, e.g. printed series of fictional short stories}; photographs; stationery; instructional and teaching material in the field of {specify area of use}; writing implements; publications, namely, {insert specific type/nature of publications, e.g. magazines and books} in the field of {insert subject matter}; books in the field of {insert subject matter}; magazines in the field of {insert subject matter}; journals in the field of {insert subject matter}; posters; {insert type of prints, e.g. art} prints; show programmes; stickers; table linen of paper; table mats of paper; table napkins of paper; booklets relating to games; printed matter including , namely, rule books and score cards for use with games; parts and ?ttings fittings for the aforesaid goods, namely, {insert specific type/nature of Class 16 parts and fittings}.”

 

Class 41:

 

“sporting and cultural activities, namely, {insert specific type/nature of sporting and cultural activity services, e.g. organizing community sporting and cultural events}; electronic games services provided by means of the internet, namely, providing on-line computer games; the provision of on-line electronic publications, namely, providing non-downloadable {insert specific type/nature of publications, e.g. booklets and brochures} in the field of {insert subject matter};  publishing of periodical and non-periodical publications including publicity texts;  production of audio and music recordings; dvd and cd-rom audio and music production; television, radio and ?lm film production; DVD and CD-ROM ?lm film production; production of audio-visual recordings; provision of entertainment services through the media of publications, namely, {insert specific type/nature of Class 41 entertainment service being provided}; provision of ongoing multimedia entertainment programs  in the field of {indicate specific field, e.g., news, comedy, variety} by television, broadband, wireless and on-line services; provision of entertainment services through the media of cine-?lms cinematic films, namely, {insert specific type/nature of Class 41 entertainment service being provided, e.g. displaying a series of films}; radio and television entertainment services, namely, {insert specific type/nature of Class 41 entertainment service being provided, e.g. production of radio and television programs}; entertainment in the form of providing ongoing television programs (services providing -) in the field of {indicate specific field, e.g., news, comedy, variety}; provision of entertainment services through the media of video-?lms  films, namely, {insert specific type/nature of Class 41 services being provided, e.g. provision of non-downloadable films via a video-on-demand service}; entertainment services for sharing audio and video recordings, namely, {insert specific type/nature of Class 41 service being provided, e.g. providing a website featuring non-downloadable audio and video  musical recordings}; publishing of electronic books and journals online; publishing of magazines in electronic form on the internet; publishing services, namely, publishing of electronic publications (including electronic publishing services); publishing of books; publication of audio books.”

 

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

 

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.  See TMEP §1402.04.

 

 

Single Work Refusal – Advisory

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is the title of a single creative work, namely, the title of a specific book or sound recording (e.g. a CD) or the title of a specific theatrical/live performance, and as such does not function as a trademark/service mark to indicate the source of applicant’s goods/services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958); TMEP §1202.08, (f).

 

Single creative works include works in which the featured content does not change significantly, whether that work is in printed, recorded, or electronic form and/or in which the content does not change significantly from one performance to another, such as a theatrical play, musical, or opera.  TMEP §1202.08(a); see Mattel, Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143-44 (TTAB 2011) (holding that LAUGH & LEARN, with design, was merely the title of a single work, where the mark was used as the title of a pre-recorded VHS tape and DVD, the VHS tape and DVD contained the same featured program, and the DVD contained “minor enhancements” such as bloopers and previews).

 

The name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the series.  The name for a series of creative works may function as a trademark/service mark to indicate that each work in the series comes from the same source as the others.  In re Arnold, 105 USPQ2d 1953, 1954 (TTAB 2013); In re Scholastic, Inc., 23 USPQ2d 1774, 1776 (TTAB 1992); see TMEP §1202.08(c).  Therefore, if applicant uses the mark to identify a series, rather than a single work, applicant may provide such evidence for the record to avoid a refusal.  Evidence of a series of goods includes copies of at least two different book covers or packaging for recorded works (not two copies of the same work) that show the mark as a source identifier for a series as well as distinguish the mark from the individual titles of the works.  See In re Arnold, 105 USPQ2d at 1956; TMEP §1202.08(c).  Evidence of a series of services includes ticket stubs or advertising for different theatrical or musical performances (not for the same show) that show the mark as a source identifier for the series as well as distinguish the mark from the individual titles of the works.  See TMEP §§1202.08(c), 1301.02(d).

 

 

Character Refusal – Advisory

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, serves to identify only the name of a particular character and as such, does not function as a trademark or service mark to identify and distinguish applicant’s goods and/or services from those of others and to indicate the source of applicant’s goods and/or services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Caserta, 46 USPQ2d 1088 (TTAB 1998); In re Hechinger Inv. Co. of Del., 24 USPQ2d 1057, 1059 (TTAB 1991); In re McDonald’s Corp., 229 USPQ 555, 555 (TTAB 1985); TMEP §§904.07(b), 1202.10, 1301.02(b).

 

The name of a character is registrable as a trademark or service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods and/or services in addition to identifying the character.  In re Caserta, 46 USPQ2d at 1090; In re Fla. Cypress Gardens Inc., 208 USPQ 288, 292 (TTAB 1980); see TMEP §§1202.10, 1301.02(b). 

 

 

Responding to this Office Action

 

 

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.  

 

 

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 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. 

                                                                   

In addition, applicant filed a TEAS Plus 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. §2.23(a)(1), (b). 

 

 

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, 2.66(b)(1).

 

 

Telephone/Email Suggested for Questions

 

 

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.

 

 

 

/Meghan Reinhart/

Trademark Examining Attorney

Law Office 108

(571) 272-2943

meghan.reinhart@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 5/16/2017 FOR U.S. APPLICATION SERIAL NO. 87330076

 

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 5/16/2017 (or sooner if specified in the Office action).  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.  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 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.