UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88001239
MARK: WARNER MEDIA
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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: WARNER MEDIA, LLC
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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: 10/9/2018
The referenced application and preliminary amendment have 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
Applicant’s mark is WARNER MEDIA, in standard characters, for use on:
Class 9: Downloadable mobile software applications for mobile communication devices for use in distribution of digital video, video files, video, and multimedia content; software for receiving, streaming, searching, accessing and reviewing audiovisual and multimedia content via the internet, mobile digital electronic devices, communications networks, satellite transmission services, and wireless telecommunications networks; computer programs and software; digital media; downloadable electronic publications; downloadable game software; video game software; video game consoles and mice; Prerecorded dvd's containing films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news, documentary and animation ; downloadable films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news and entertainment news, documentary and animation ; musical recordings; musical video recordings
The registered mark in U.S. Registration No. 0391866 is WB WARNER BROS. PICTURES INC., with a design element, for use on:
Class 9: Motion pictures and motion picture films, which have records of sound, words, and/or music thereon, and motion picture films adapted for synchronization with sound, words, and/or music records; synchronized apparatus for simultaneously reproducing coordinated light and sound effects and the component parts of such apparatus
The registered mark in U.S. Registration No. 0680457 is WARNER BROS. WB, with a design element, for use on:
Class 9: Phonograph records and tapes with sound recorded thereon
The registered mark in U.S. Registration No. 1969829 is WB WARNER BROS., with a design element, for use on:
Class 9: prerecorded goods, namely, prerecorded records and prerecorded discs featuring action, adventure, animation, comedy, drama, or music
The registered mark in U.S. Registration No. 1978089 is WARNER BROS. SOUND EFFECTS LIBRARY, in standard characters, for use on:
Class 9: prerecorded goods, namely, prerecorded discs featuring a compendium of sound effects
The registered mark in U.S. Registration No. 2113882 is WB WARNER HOME VIDEO, with a design element, for use on:
Class 9: motion picture films featuring comedy, drama, action, adventure and/or animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and/or animation; audio video discs featuring music, comedy, drama, action, adventure, and/or animation
The registered mark in U.S. Registration No. 3383332 is WARNER PREMIERE, in standard characters, for use on:
Class 9: digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation
The registered mark in U.S. Registration No. 3389519 is WP WARNER PREMIERE, with a design element, for use on:
Class 9: digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation
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 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.” 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.
Comparing the Goods
The application uses broad wording to describe “digital media” and “Prerecorded dvd's containing films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news, documentary and animation,” which presumably encompasses all goods of the type described, including registrant’s more narrow digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation, and phonograph records and tapes with sound recorded thereon. 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). Further, registrant’s prerecorded discs and motion pictures are broadly worded and encompass applicant’s more narrow prerecorded DVDs. Additionally, the goods 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)).
Determining likelihood of confusion is based on the description of the goods 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)).
Comparing the 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).
In this case, the wording in applicant’s mark is WARNER MEDIA, and the wording in registrant’s marks is WARNER PREMIERE, WB WARNER PREMIERE, WB WARNER HOME VIDEO, WARNER BROS. SOUND EFFECTS LIBRARY, WB WARNER BROS., WARNER BROS WB, and WB WARNER BROS. PICTURES. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the compared marks all contain the wording WARNER.
Although applicant’s mark and registrant’s marks all also contain different wording, this does not obviate the similarities between the compared marks. First, 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). Matter that is disclaimed or descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording HOME VIDEO and SOUND EFFECTS LIBRARY in the registered marks is merely descriptive of or generic for registrant’s goods. Further, the wording BROS. in the registered marks is merely a common business entity designation. Consumers viewing the additional lettering WP and WB in the registered marks understand that this reinforces the wording in the marks that begins with that lettering. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording WARNER the more dominant element of the marks.
Since the marks are identical in part in sound, appearance, and connotation, and the goods are encompassing and closely related, source confusion is likely. Therefore, applicant’s mark is not entitled to registration.
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 0391866, 0680457, 1969829, 1978089, 2113882, 3383332, 3389519.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Applicant should note the following additional ground for refusal.
Section 2(e)(4) Refusal – Primarily Merely A Surname
An applicant’s mark is primarily merely a surname if the surname “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); 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.
In this case, applicant has applied to register the mark WARNER MEDIA for “Downloadable mobile software applications for mobile communication devices for use in distribution of digital video, video files, video, and multimedia content; software for receiving, streaming, searching, accessing and reviewing audiovisual and multimedia content via the internet, mobile digital electronic devices, communications networks, satellite transmission services, and wireless telecommunications networks; computer programs and software; digital media; downloadable electronic publications; downloadable game software; video game software; video game consoles and mice; Prerecorded dvd's containing films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news, documentary and animation ; downloadable films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news and entertainment news, documentary and animation ; musical recordings; musical video recordings” in Class 9.
Please see the attached evidence from LEXISNEXIS®, establishing the surname significance of WARNER. This evidence shows the applied-for mark appearing 119,388 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. Accordingly, the surname is not rare.
The mark is in standard character form, lacking any stylization which would remove its primary significance from that of a surname. Therefore, upon weighing of the above factors, the primary significance of the term WARNER to purchasers is primarily merely a surname.
Specifically, the additional wording MEDIA is merely descriptive of or generic for applicant’s goods because it means a mode of artistic expression or communication and digital audio or video files available for playback or streaming. This wording MEDIA appears in applicant’s identification of goods. Accordingly, the wording MEDIA describes a feature or basic nature of applicant’s goods.
Thus, registration is refused pursuant to Section 2(e)(4) of the Trademark Act.
Supplemental Register Advisory
If applicant files an acceptable allegation of use and also amends 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 an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03. Applicant should note that amending to the Supplemental Register does not obviate the other refusal(s) and/or requirement(s) in this Office Action.
Disclaimer Advisory
The following is the standardized format for a disclaimer:
No claim is made to the exclusive right to use “MEDIA” apart from the mark as shown.
TMEP §1213.08(a)(i).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification of Goods Requirement
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
The wording “digital media” in the identification of goods is indefinite and must be clarified because the specific form of media provided and the subject matter or field are required. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “downloadable game software” and “downloadable films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news and entertainment news, documentary and animation” in the identification of goods is indefinite and must be clarified because the specific nature of the game software and downloadable films and programs is required. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “video game consoles and mice” in the identification of goods in International Class 9 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the type of mice are provided. Further, this wording could identify goods in more than one international class. For example, computer mice are in International Class 9 and gaming mice and video game consoles are in International Class 28.
Applicant may adopt the following identification, if accurate:
Class 9: Downloadable mobile software applications for mobile communication devices for use in distribution of digital video, video files, video, and multimedia content;
software for receiving, streaming, searching, accessing and reviewing audiovisual and multimedia content via the internet, mobile digital electronic devices, communications networks, satellite
transmission services, and wireless telecommunications networks; computer programs and software for {specify function of the programs, e.g., receiving, streaming, searching,
accessing and reviewing audiovisual and multimedia content via the internet, mobile digital electronic devices, communications networks, satellite transmission services, and wireless
telecommunications networks, etc.}; digital media, namely, {indicate form of the goods, e.g., CDs, DVDs, downloadable audio files, etc.} featuring {indicate subject matter or
field}; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; downloadable
computer game software from a global computer network; video game software; video game consoles and computer mice; Prerecorded
DVDs containing films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news, documentary and animation ;
downloadable films and television programs featuring comedy, drama, action, variety, adventure, sports, music and musicals, current events, news and entertainment news, documentary and animation
provided via a video-on-demand service; musical recordings; musical video recordings
Class 28: video game consoles and gaming mice
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.
Multiple-Class Application Requirements
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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. 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.
/Elizabeth Shen/
Trademark Examining Attorney
Law Office 121
571-270-7111
elizabeth.shen@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.