Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88107786 PH(Standard Characters, see http://uspto.report/TM/88107786/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In the Office Action, the Examining Attorney refused registration of Applicant's mark in class 38 on the grounds that Applicant's mark is allegedly confusingly similar to the marks in Registration Nos. 5015046 and 5019629, both owned by the same entity, which has apparently been rebranded as PHMG. The undersigned respectfully disagrees. As made clear by its amended identification of services in class 38, Applicant's mark is used in connection with video broadcasting and electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainment and only in the field of adult entertainment. From a review of the nature of the services in all of the classes in the cited marks, it is readily apparent that the cited marks have nothing whatsoever to do with adult entertainment, especially with respect to "radio and television broadcasting" in class 38. The Registrant's website, www.phmg.com, demonstrates that Registrant's services have nothing to do with adult entertainment. Indeed, the nature of Registrant's services can be described as providing audio branding, music on hold and on-hold marketing to more than 32,000 clients worldwide, including Coca-Cola, Adidas and Audi. See Hospitality & Catering News, March 6, 2015 (attached) and www.phmg.com. Without question, Registrant's services, including radio and television broadcasting, for clients, such as Coca-Cola, cannot relate in any way to adult entertainment. By way of contrast, Applicant's services in class 38 of the instant application solely relate to services provided to the adult entertainment industry. In light of the foregoing, Applicant views it as overwhelmingly unlikely that any reasonably prudent person, especially a sophisticated customer of adult content, would assume that Registrant's radio and television services have any relationship with Applicant's services. Likewise, it is inconceivable that any individual seeking the services of Registrant would mistake Applicant's adult entertainment services for those of Registrant. See Paco Sport, Ltd. v. Paco Rabane Perfums, 86 F. Supp. 2d 305 (S.D.N.Y. 2000), aff'd 234 F.3d 1262 (2d Cir. 2000) (no likelihood of confusion between PACO RABANE fragrance marketed to wealthy fashion-conscious consumers and PACO clothing marketed to young urban men); Tsiolis v. Interscope Records, Inc., 946 F. Supp. 1344 (N.D. Ill. 1996) (no confusion between record companies using the same name marketing in different genres). Applicant's and Registrant's services are offered in entirely different channels of trade, marketed to a different class of consumers, and are unlikely to give rise to a mistaken belief that the services are offered from a common source. See In re Wimbledon Shops, Inc., 2002 WL 1844153 (T.T.A.B. 2002) (finding that collectible porcelain dolls and children's puppets were not related goods.) Accordingly, as there can be no likelihood of confusion as between Applicant's video broadcasting in and for the adult entertainment industry and Registrant's radio and television services to clients such as Coca-Cola, Applicant is entitled to registration of its PH mark in class 38. Applicant, therefore, respectfully requests that the section 2(d) refusal as to class 38 be withdrawn and the instant application be passed to publication.

EVIDENCE
Evidence in the nature of Printout of excerpt from Hospitality & Catering News of March 6, 2015 has been attached. Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Video-on-demand transmission services; video broadcasting; electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainment
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Video-on-demand transmission services; video broadcasting; video broadcasting and electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainment; electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainmentClass 038 for Video-on-demand transmission services; video broadcasting and electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainment
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /EMK012362/     Date: 02/21/2019
Signatory's Name: Evan M. Kent
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 310-312-3111

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88107786
Internet Transmission Date: Thu Feb 21 16:12:55 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201902211612554
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cb-N/A-N/A-20190221151107313160