To: | FILMIO, INC. (mail@noli-ipsolutions.com) |
Subject: | U.S. Trademark Application Serial No. 88098135 - GREENLIGHT THE FUTURE OF - FO18002USTM |
Sent: | July 03, 2019 12:10:00 PM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88098135
Mark: GREENLIGHT THE FUTURE OF
|
|
Correspondence Address: |
|
Applicant: FILMIO, INC.
|
|
Reference/Docket No. FO18002USTM
Correspondence Email Address: |
|
SUSPENSION NOTICE
No Response Required
Issue date: July 03, 2019
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Applicant was previously provided information regarding pending U.S. Application Serial No(s). 86648094, 86648097, 86648112, 86938813, and 87895685, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. In response, applicant argued that the mark in the pending applications are not likely to cause confusion with applicant’s mark. Specifically, applicant argued that the marks are visually dissimilar.
With respect to applicant’s argument, the argument is unpersuasive because the marks at issue contain similar wording. 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).
Furthermore, the services at issue are closely related. Where the services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
The trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the mark(s) in the cited prior-pending application(s), should they register. Thus, this application is suspended.
Refusal(s) and maintained and continued. See TMEP §713.02. The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Section 2(d) Refusal – Likelihood of Confusion
• Sections 1 and 45 Refusal – Failure to Show Use in Commerce
Section 2(d) Refusal – Likelihood of Confusion
Applicant argues that the applied-for mark and registered marks are visually dissimilar and that there are third-party registrations featuring components of the mark at issue. These arguments are unpersuasive.
In this case, the applied-for mark and registered marks (Registration Nos. 2359486, 43718530, and 4961242) contain the identical wording “GREENLIGHT” and “THE FUTURE OF ENTERTAINMENT”. 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).
Applicant argues that the examining attorney has improperly dissected the marks. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). In this case, the entirety of the marks at issue along with the services at issue stimulate the same mental reaction and overall commercial impression.
Furthermore, the third-party registrations are not persuasive because, in their entireties, the third party registrations do not create the same overall commercial impression as the marks at issue.
Applicant also argues that the services are not identical or similar. This argument is unpersuasive and is not supported by any evidence of record. Attached to the prior Office action was evidence from www.amazon.com, www.hulu.com, and www.youtube.com establishing the services at issue – specifically telecommunications and broadcasting services in Class 38 and entertainment services in Class 41 originate from a common source. Therefore, they are related in a manner that could give rise to the mistaken belief that the services emanate from the same source. The compared 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 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).
Sections 1 and 45 Refusal – Failure to Show Use in Commerce
Neither the original nor the substitute specimen show any association between the applied-for mark and enumerated services. The original specimen contains a screenshot of applicant’s website and Facebook ® page. The substitute specimen contains similar screenshots. None of these specimens show the applied-for mark in the actual sale, rendering or advertising of “Streaming of audiovisual and multimedia content via internet; transmission and delivery of audiovisual and multimedia content via the internet; video on-demand transmission services”. At best applicant’s Facebook ® page establishes that applicant is a software company and the substitute specimen of applicant’s webpage indicates that applicant’s services feature blockchain technology. No inference can be made that a software company or a website that features blockchain technology is providing “Streaming of audiovisual and multimedia content via internet; transmission and delivery of audiovisual and multimedia content via the internet; video on-demand transmission”.
These refusals will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Katrina J. Goodwin/
Examining Attorney
Law Office 122
571-272-7605
Katrina.Goodwin@uspto.gov