To: | Stampede Entertainment, Inc. (trademarks.us@dentons.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87910600 - STAMPEDE - 152614420012 |
Sent: | 9/4/2018 5:10:59 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87910600
MARK: STAMPEDE
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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: Stampede Entertainment, Inc.
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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. 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: 9/4/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – Partial Refusal – Class 41 Only
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
This partial refusal applies to Class 41 Only
Applicant’s applied-for mark is “STAMPEDE” in standard characters for, in relevant part, “Entertainment services, including, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, including, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, including, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, including, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing services” in Class 41.
The registered mark is “STAMPEDE” in standard characters for “entertainment services; namely, the production and distribution of motion picture films, videotapes, television shows and sound recordings; namely, phonograph records, audio magnetic tapes, compact discs, digital audio tapes, compact disc videos, and laser discs; and sheet music publication services” in Class 41.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s mark is “STAMPEDE” and registrant’s mark is “STAMPEDE”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Similarity of the Services
The application uses broad wording to describe “Entertainment services, including, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, including, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, including, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, including, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing services”, which presumably encompasses all services of the type described, including registrant’s more narrow “entertainment services; namely, the production and distribution of motion picture films, videotapes, television shows and sound recordings; namely, phonograph records, audio magnetic tapes, compact discs, digital audio tapes, compact disc videos, and laser discs; and sheet music publication services”. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
In short, both applicant and registrant provide production services pertaining to motion pictures, television, and sound recordings.
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Therefore, with the contemporaneous use of “STAMPEDE” and “STAMPEDE” for encompassing production services, consumers are likely to reach the mistaken conclusion that the goods are related and originate from a common source because same entity commonly provides the relevant goods and markets the goods under the same mark.
Accordingly, registration is refused under Trademark Act Section 2(d).
Applicant may substitute the following wording, if accurate:
Class 35: Business services, namely, business consultation, business advisory and business management services in the entertainment industry; advertising services
Class 36: Financial services, namely, providing venture capital, development capital, private equity and investment funding services; venture capital services, namely, venture capital advisory services and providing financing for entertainment and educational projects; financing and funding services, namely, project financing and venture capital funding; investment services, namely, investment advice in the entertainment industry
Class 41: Entertainment services, namely, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, namely, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, namely, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, namely, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing services
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.
RESPONSE GUIDELINES
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.
/Karen Sulita Dindayal/
Examining Attorney
Law Office 117
571-272-8208
karen.dindayal@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.