To: | AREA NON-PROFIT, INC. (lwheeler@uptv.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87554770 - AREA - N/A |
Sent: | 11/6/2017 1:25:30 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87554770
MARK: AREA
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: AREA NON-PROFIT, INC.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. 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: 11/6/2017
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.
Refusal – Likelihood of Confusion
Similarity of Marks
Applicant has applied for the mark AREA (stylized) for Entertainment and educational services, namely, provision of dance and performing arts instruction, educational programs and resources for amateur and professional artistic development, community outreach and arranging performing arts presentations.
The registered mark is AREA EVENT (and design) for Consultation in the field of special event planning for social entertainment purposes; disc jockey services; entertainment in the nature of live performances by disc jockeys; entertainment in the nature of visual and audio performances by disc jockeys and electronic dance music artists; entertainment services in the nature of live musical performances; entertainment services in the nature of presenting live musical performances; entertainment, namely, live music concerts; live performances by a musical group; organization of exhibitions for musical entertainment; providing a website featuring information in the field of music and entertainment; providing a website for entertainment purposes featuring photographs and video about disc jockeys, electronic dance music artists, and music events and festivals; special event planning for social entertainment purposes.
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 goods and/or 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).
Here, applicant’s and registrant’s marks each share the same dominant non-disclaimed initial term, namely, AREA.
Therefore, the marks are confusingly similar.
Similarity of Services
Here, applicant and registrant each provide types of entertainment services featuring dance and/or other performing arts-related performances.
Accordingly, the respective services are related.
Because the marks are so highly similar and the services are so closely related, there is a likelihood that purchasers would confuse the sources of the services or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.
Recitation of Services
Applicant may adopt the following wording, if accurate (suggested edits in bold):
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.
Color Drawing and Description of Mark
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a substitute black-and-white drawing of the mark to replace the color drawing of record. See TMEP §807.07(a)(i). However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit an accurate and concise description of the literal and design elements in the mark, omitting any reference to color. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the stylized wording “AREA.”
(2) If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:
Color claim: “The colors gold, maroon and turquoise are claimed as a feature of the mark.”
Mark description: “The mark consists of the stylized wording “AREA” in gold, with maroon outlines around the top of the lettering and turquoise shadowing beneath the lettering.”
See TMEP §807.07(b).
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.
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@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.