To: | Iconic Talent Agency, Inc. (mark@stutzmanklotz.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88043129 - ICONIC - N/A |
Sent: | 1/5/2019 3:28:41 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88043129
MARK: ICONIC
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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: Iconic Talent Agency, 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: 1/5/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on December 5, 2018.
In a previous Office action(s) dated November 7, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4949316. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in Reg. No. 4949316. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Applicant seeks registration of the mark “ICONIC” for “talent agencies for cinematography, production design, costume design, and film editing professionals”.
Registrant’s mark is “ICONIC ENTERTAINMENT GROUP” (“Entertainment Group” disclaimed) for “management of performing and recording artists; Business assistance, advisory and consulting services in the field of musical recording and performance; Consulting services relating to publicity in the fields of music and performing arts; Branding services, namely, consulting, development, management and marketing of brands for artist clients.”
Similarity of the Marks
In this case, the applicant’s mark is ICONIC and the registrant’s mark is ICONIC ENTERTAINMENT GROUP.
In a likelihood of confusion determination, 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Here, a comparison of the applicant’s mark and the registrant’s mark shows they are highly similar in appearance, sound, connotation, and commercial impression. Specifically, they are similar in appearance in that the wording ICONIC appears at the beginning of each mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Further, the applicant’s mark ICONIC is also comprised entirely within the registrant’s mark ICONIC ENTERTAINMENT GROUP. This similarity in appearance also renders the marks similar in sound. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Furthermore, the applicant’s mark and the registrant’s mark are similar in appearance insofar as they share the same dominant feature of ICONIC. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In this case, the applicant’s mark is comprised entirely of the wording “ICONIC” while the wording “ICONIC” in the registrant’s mark is the most distinctive element, appearing first in the mark, with the remainder of the wording “ENTERTAINMENT GROUP” expressly disclaimed. See attached registration showing “ENTERTAINMENT GROUP” disclaimed. Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Further, the compared marks also create a similar commercial impression. Specifically, the wording ICONIC in relation to the services in both marks similarly connote services in the performing arts that are memorable or “iconic”. As a result of this similarity in connotation, appearance and sound, it therefore follows that the compared marks engender a similar commercial impression.
Finally, it is noted that applicant did not contest the similarity of the respective marks. Indeed, applicant admitted that the marks are similar. See Applicant’s December 5, 2018 Response (“while the marks are similar, they are not identical”).
Thus, based on the similarity in appearance, sound, and meaning of the applicant’s mark to the registrant’s mark and the resulting similarity in the overall commercial impression, the marks are confusingly similar.
Relatedness of the Services
Further, in a likelihood of confusion determination, the goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi).
In this case, the applicant seeks registration of the applied-for mark in connection with “Talent agencies for cinematography, production design, costume design, and film editing professionals”. The registrant’s services are “Management of performing and recording artists; Business assistance, advisory and consulting services in the field of musical recording and performance; Consulting services relating to publicity in the fields of music and performing arts; Branding services, namely, consulting, development, management and marketing of brands for artist clients”.
The compared goods and/or services 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); TMEP §1207.01(a)(i). They 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).
The Internet evidence attached in the initial Office Action, consisting of excerpts from third party website, establishes that providers of talent agency services also provide branding services, business assistance and consulting services for their customers under the same mark, that these services are provided through the same trade channels and used by the same classes of consumers in the same fields of use. See attached evidence from gersh.com, endeavorco.com, abramsartists.com and icmpartners.com. Additionally, the attached Internet evidence further demonstrates the relatedness of the applicant’s and registrant’s services. Specifically, it demonstrates that providers of talent agency services for the application’s “cinematography, production design, costume design, and film editing professionals” also provide these services for performing artists. See attached evidence from apa-agency.com, innovativeartists.com and icmpartners.com. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In total, the two marks create the same highly similar commercial impression and the evidence shows that services are commercially related and likely to be encountered by the same class of consumers. Therefore, because of this likelihood of confusion, registration must be refused under Section 2(d) of the Lanham Act.
Applicant’s Response
Applicant argues that the consumers of its and the registrant’s services are sophisticated parties and as such, would be able to distinguish between the services provided by applicant and the services provided by the registrant. Applicant’s Response at 1-2. Along with this, applicant argues that its class of consumers differs from the registrant in that the applicant is providing services for what is known as “below the line” talent – film and television professionals whose area of work is done offscreen in the areas of cinematography, production design, costume design, and film editing – while the registrant’s services are provided to performing artists, known as “above the line talent”. Applicant argues that in light of these differences and the fact that the marks are not identical, there is no likelihood of confusion. See id. In support of this argument, applicant has attached several documents, consisting of a reference to a print directory for below the line talent, an article from a third party website discussing the role of talent agencies in Hollywood, the information for three talent agencies for below the line talent and listings from two websites that feature jobs and news in the field of below the line employment.
As an initial matter, applicant has not introduced evidence to establish that the respective consumers are “sophisticated consumers”. Even assuming applicant proffered probative evidence on the point, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). In any event, the identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
Moreover, despite applicant’s assertion that these services are not related, the evidence attached in the initial Office Action, along with the additional evidence attached herein, indicates otherwise. Specifically, the Gersh Agency, Innovative Artists, APA Agency and ICM Partners all provide talent agency services for the application’s “below the line” talent and the registrant’s “above the line talent”. The fact that these services may appear under different headings in these providers’ websites is irrelevant for purposes of a likelihood of confusion analysis, as the inquiry is whether these services are provided under the same mark. Indeed, applicant’s response acknowledges that various agencies provide the parties’ respective services under the same mark. See Applicant’s December 5, 2018 Response, n. 1. This establishes that consumers are accustomed to encountering a single source offering the respective services, which only enhances the likelihood of consumer confusion.
Applicant also argues that further demarcation of its services and the registrant’s services is evidenced by the statutory framework of California as it defines “talent agency” services. Applicant’s Response at 3. This argument is of limited persuasiveness as the Principal Register is under federal jurisdiction and generally, once a trademark is registered, it grants the owner exclusive and continuing use of that mark in the United States. In any event, as established by the record evidence, third parties offer the respective services under the same mark.
Finally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). Since applicant’s ICONIC mark is highly similar to registrant’s ICONIC ENTERTAINMENT GROUP” mark, a lower threshold is needed to find likely consumer confusion. Even without the benefit of this legal construct, the record evidence establishes that the respective services are sufficiently related to support a finding of likely confusion.
Conclusion
In sum, the applied-for mark and the registered mark are highly similar in sound, appearance, meaning and create the same commercial impression. The applicant’s services and the registrant’s services, as demonstrated by the evidence of record, are closely related because they are often made and marketed by the same sources and travel in the same trade channels. Therefore, it is likely a consumer—upon encountering the goods offered under the marks at issue—would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.
Because of this likelihood of source confusion, the refusal to register the applied-for mark under Section 2(d) of the Trademark Act is maintained and made FINAL.
RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
/Alexis Webster/
Examining Attorney
Law Office 112
571-272-5463
alexis.webster@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.