| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87624543 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87624543/mark.png |
| LITERAL ELEMENT | INTREPID |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
Applicant: Pedersen Media Group, Inc.
Mark: INTREPID
Ser. No.: 87/624543
Filing Date: September 27, 2017
Examining Att'y: Brendan J. Ketchum Law Office 125
Office Action Date: December 14, 2017
INTRODUCTION
Applicant Pedersen Media Group, Inc. ("Applicant") hereby responds to the Office Action issued on December 14, 2017. The Examining Attorney has cited Reg. No. 4920444 for the mark IMS INTREPID MARKETING SOLUTIONS and Reg. Nos. 3360752, 3360754, and 5113717 for INTREPID PICTURES (collectively, the "Cited Marks") as a bar to registration. Applicant believes there is no likelihood of confusion between the Cited Marks and Applicant's mark, for the reasons set forth below. PRELIMINARY CHANGE IN SCOPE OF SERVICES AS SET OUT IN APPLICATION Applicant believes that its services are so different from those covered by the registration of the Cited Marks that this difference alone would preclude any likelihood of confusion. Specifically, Applicant does not offer services relating to the music and entertainment industry and does not engage in the production or distribution of motion pictures, while the Cited Mark's services are exclusive to those areas. Thus, Applicant is willing to voluntarily modify the scope of its services as set out in the application to adopt the suggestions of the Examining Attorney and adds language specifically distinguishing its services from those of the Cited Mark: Video pre-production services relating to content development for businesses, namely, screenplay writing; video production services for businesses, namely, live-action video production services in studio and on location; post-production services for businesses, namely, post-production editing services relating to content development, creative concept development, scriptwriting, live-action production in studio and on location, digital cinema production; rental of cameras, lenses and production equipment; creative services related to digital motion graphics and animation, namely, animation production services; creative and production services related to virtual reality and augmented reality experiences, namely, augmented reality video production; live event design services, namely, consultation and advice regarding musical selections and arrangements for sound recordings and live performances; live event production services and on-site management for businesses, and creative services related thereto, namely, presentation of live show performances Applicant declines to include services in class 35. With this modification, Applicant believes that the remainder of its response below compels the conclusion that there is no likelihood of consumer confusion with the Cited Marks. ALLEGED LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of Applicant's mark under section 2(d) of the Lanham Act based on an alleged likelihood of confusion with the Cited Marks. Applicant respectfully disagrees that there is any likelihood of confusion between Applicant's mark and the Cited Marks, based on differences in appearance, differences in the nature of the services, and differences in the target market. Specifically, IMS INTREPID MARKETING SOLUTIONS' services are expressly limited to "Business consulting services in the music and entertainment industry…" in class 35. The amended description of services omits services in class 35. The services are now exclusively related to video production, equipment rental, and the like in class 41. Likewise, INTREPID PICTURES' services are limited to "Production and distribution of motion pictures." Applicant is not involved in the production or distribution of motion pictures in any capacity, and is willing to expressly limit its description of service if necessary. The description of service specifies that its services are provide "for businesses," not motion pictures. A. Differences between the marks preclude any likelihood of confusion. The test for determining likelihood of confusion under section 2(d) was set forth in In re Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The first Du Pont factor is "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." Id. at 1361. In this case, Applicant's mark is sufficiently different than the Cited Marks in sound, appearance and overall commercial impression so as to preclude any likelihood of consumer confusion. Specifically, as to sound and appearance, Applicant's mark is simply the word "INTREPID", whereas the dominant feature of the IMS INTREPID MARKETING SOLUTIONS is the graphical logo "IMS" followed by multiple words, including "INTREPID". The "INTREPID PICTURES" marks contain additional elements as well. The marks must be considered as a whole, with special attention given to the dominant features of the respective marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. (BNA) 749 (1985) ("The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used.") See also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1337, 1341, 115 U.S.P.Q.2d (BNA) 1671, 1676 (2015). In Juice Generation, the court held that when two marks contain identical words (in that case, PEACE & LOVE), the Board should consider how the addition of other words changes the overall impression (in that case, PEACE LOVE AND JUICE). As in Juice Generation, the "IMS" graphical logo and the additional words "MARKETING SOLUTIONS" and "PICTURES" give the Cited Marks "IMS INTREPID MARKETING SOLUTIONS" and "INTREPID PICTURES" an entirely different commercial impression from simply "INTREPID". Likewise in In re Bed & Breakfast Registry, 791 F.2d 157, 158, 229 U.S.P.Q. (BNA) 818 (1986), the court held that that the Board erred in a Section 2(d) refusal of BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL because the overall impression of the marks was "not confusingly similar in either sound or appearance." Applicant respectfully points out that even though "MARKETING SOLUTIONS" and "PICTURES" are disclaimed, those words must be considered as a distinguishing feature of the Cited Mark. See Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004) ("The disclaimed elements of a mark, however, are relevant to the assessment of similarity.") Thus, the marks should be able to co-exist, even if used with the same services. But, as noted above, the modified services are exclusive. B. Applicant's services are different than the Cited Mark owner's services, and are used by different persons.
Another key factor in the likelihood of confusion analysis is similarity of the services. In re Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The Office Action suggests that the services are closely related. Applicant respectfully disagrees, especially now with the scope of the Applicant's services in this application are clarified and narrowed from that as set out in the original application. Applicant does not offer services in the music and entertainment industries or motion picture industry, and will limit the scope of its described services accordingly, while the Cited Marks are limited to the "music and entertainment industry…" and "production and distribution of motion pictures," respectively. CONCLUSION In light of the foregoing, Applicant respectfully submits that its application is in condition for publication.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Video pre-production, production and post-production services for businesses relating to advertising and marketing services, strategic consulting, content development, creative concept development, scriptwriting, live-action production in studio and on location, digital cinema production; creative, production, and post-production editing services for video and audio commercials and other advertising communications; rental of cameras, lenses and production equipment; creative services related to digital motion graphics and animation; creative and production services related to virtual reality and augmented reality experiences; live event design, production, and on-site management for businesses, and creative services related thereto | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 041 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Video pre-production services relating to content development for businesses, namely, screenplay writing; video production services for businesses, namely, live-action video production services in studio and on location; post-production services for businesses, namely, post-production editing services relating to content development, creative concept development, scriptwriting, live-action production in studio and on location, digital cinema production; rental of cameras, lenses and production equipment; creative services related to digital motion graphics and animation, namely, animation production services; creative and production services related to virtual reality and augmented reality experiences, namely, augmented reality video production; live event design services, namely, consultation and advice regarding musical selections and arrangements for sound recordings and live performances; live event production services and on-site management for businesses, and creative services related thereto, namely, presentation of live show performances | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /John A. Lofton/ |
| SIGNATORY'S NAME | John A. Lofton |
| SIGNATORY'S POSITION | Attorney of Record, California Bar Member |
| SIGNATORY'S PHONE NUMBER | 415-957-1800 |
| DATE SIGNED | 06/13/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jun 13 17:52:23 EDT 2018 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 180613175223267692-876245 43-610e96790b476da5b8c11c f6c2ce5f3ec061f124c34140d 384c022dd856dd896a2-N/A-N /A-20180613174252637543 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Applicant: Pedersen Media Group, Inc.
Mark: INTREPID
Ser. No.: 87/624543
Filing Date: September 27, 2017
Examining Att'y: Brendan J. Ketchum
Law Office 125
Office Action Date: December 14, 2017
INTRODUCTION
Applicant Pedersen Media Group, Inc. ("Applicant") hereby responds to the Office Action issued on December 14, 2017. The Examining Attorney has cited Reg. No. 4920444 for the mark IMS INTREPID MARKETING SOLUTIONS and Reg. Nos. 3360752, 3360754, and 5113717 for INTREPID PICTURES (collectively, the "Cited Marks") as a bar to registration. Applicant believes there is no likelihood of confusion between the Cited Marks and Applicant's mark, for the reasons set forth below.
PRELIMINARY CHANGE IN SCOPE OF SERVICES AS SET OUT IN APPLICATION
Applicant believes that its services are so different from those covered by the registration of the Cited Marks that this difference alone would preclude any likelihood of confusion. Specifically, Applicant does not offer services relating to the music and entertainment industry and does not engage in the production or distribution of motion pictures, while the Cited Mark's services are exclusive to those areas. Thus, Applicant is willing to voluntarily modify the scope of its services as set out in the application to adopt the suggestions of the Examining Attorney and adds language specifically distinguishing its services from those of the Cited Mark:
Video pre-production services relating to content development for businesses, namely, screenplay writing; video production services for businesses, namely, live-action video production services in studio and on location; post-production services for businesses, namely, post-production editing services relating to content development, creative concept development, scriptwriting, live-action production in studio and on location, digital cinema production; rental of cameras, lenses and production equipment; creative services related to digital motion graphics and animation, namely, animation production services; creative and production services related to virtual reality and augmented reality experiences, namely, augmented reality video production; live event design services, namely, consultation and advice regarding musical selections and arrangements for sound recordings and live performances; live event production services and on-site management for businesses, and creative services related thereto, namely, presentation of live show performances
Applicant declines to include services in class 35. With this modification, Applicant believes that the remainder of its response below compels the conclusion that there is no likelihood of consumer confusion with the Cited Marks.
ALLEGED LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of Applicant's mark under section 2(d) of the Lanham Act based on an alleged likelihood of confusion with the Cited Marks. Applicant respectfully disagrees that there is any likelihood of confusion between Applicant's mark and the Cited Marks, based on differences in appearance, differences in the nature of the services, and differences in the target market. Specifically, IMS INTREPID MARKETING SOLUTIONS' services are expressly limited to "Business consulting services in the music and entertainment industry…" in class 35. The amended description of services omits services in class 35. The services are now exclusively related to video production, equipment rental, and the like in class 41.
Likewise, INTREPID PICTURES' services are limited to "Production and distribution of motion pictures." Applicant is not involved in the production or distribution of motion pictures in any capacity, and is willing to expressly limit its description of service if necessary. The description of service specifies that its services are provide "for businesses," not motion pictures.
A. Differences between the marks preclude any likelihood of confusion.
The test for determining likelihood of confusion under section 2(d) was set forth in In re Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The first Du Pont factor is "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." Id. at 1361. In this case, Applicant's mark is sufficiently different than the Cited Marks in sound, appearance and overall commercial impression so as to preclude any likelihood of consumer confusion. Specifically, as to sound and appearance, Applicant's mark is simply the word "INTREPID", whereas the dominant feature of the IMS INTREPID MARKETING SOLUTIONS is the graphical logo "IMS" followed by multiple words, including "INTREPID". The "INTREPID PICTURES" marks contain additional elements as well.
The marks must be considered as a whole, with special attention given to the dominant features of the respective marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. (BNA) 749 (1985) ("The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used.") See also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1337, 1341, 115 U.S.P.Q.2d (BNA) 1671, 1676 (2015).
In Juice Generation, the court held that when two marks contain identical words (in that case, PEACE & LOVE), the Board should consider how the addition of other words changes the overall impression (in that case, PEACE LOVE AND JUICE). As in Juice Generation, the "IMS" graphical logo and the additional words "MARKETING SOLUTIONS" and "PICTURES" give the Cited Marks "IMS INTREPID MARKETING SOLUTIONS" and "INTREPID PICTURES" an entirely different commercial impression from simply "INTREPID".
Likewise in In re Bed & Breakfast Registry, 791 F.2d 157, 158, 229 U.S.P.Q. (BNA) 818 (1986), the court held that that the Board erred in a Section 2(d) refusal of BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL because the overall impression of the marks was "not confusingly similar in either sound or appearance."
Applicant respectfully points out that even though "MARKETING SOLUTIONS" and "PICTURES" are disclaimed, those words must be considered as a distinguishing feature of the Cited Mark. See Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1243 (Fed. Cir. 2004) ("The disclaimed elements of a mark, however, are relevant to the assessment of similarity.")
Thus, the marks should be able to co-exist, even if used with the same services. But, as noted above, the modified services are exclusive.
B. Applicant's services are different than the Cited Mark owner's services, and are used by different persons.
Another key factor in the likelihood of confusion analysis is similarity of the services. In re Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The Office Action suggests that the services are closely related. Applicant respectfully disagrees, especially now with the scope of the Applicant's services in this application are clarified and narrowed from that as set out in the original application. Applicant does not offer services in the music and entertainment industries or motion picture industry, and will limit the scope of its described services accordingly, while the Cited Marks are limited to the "music and entertainment industry…" and "production and distribution of motion pictures," respectively.
CONCLUSION
In light of the foregoing, Applicant respectfully submits that its application is in condition for publication.