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. 88147549 MUSE(Standard Characters, see http://uspto.report/TM/88147549/mark.png) has been amended as follows:

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

 

SECTION 2(d) AND ANTICIPATORY REFUSALS

 

The Examining Attorney initially refused registration of Applicant's MUSE mark ("Applicant's Mark") under Section 2(d), 15 U.S.C. § 1052(d), on the ground of an alleged likelihood of confusion with U.S. Registration Nos. 5462419, 4993216, 5011703, 2471368, and 4174021(dead) (the "Cited Registrations"), and prior-pending Application Nos. 79/247595 and 87/830187 (the "Cited Applications”); collectively, the Cited Registrations and the Cited Application are the "Cited MUSE Marks"):

Mark	Reg. No./Serial No.	Goods/Services	Owner
MUSE – THE ART OF STYLE	5462419	IC 41 Organization of fashion shows for entertainment purposes	The Muse Fashion LLC
MUSE	4993216	IC 41: Educational and entertainment services, namely, providing art instruction and art activities, namely, art and painting classes	Muse Paintbar, LLC
A MUSE	2471368	IC 35: Art gallery	A Muse Gallery
	5011703	IC 41: Educational and entertainment services, namely, providing art instruction and art activities, namely, art and painting classes	Muse Paintbar, LLC
MUSE GALLERY	4174021 DEAD	IC 35:  Art galleries	A Muse Gallery
MUSE	79/247595	IC 35:  Retail services for works of art provided by art galleries; promoting artwork of others	Bayerische Motoren Werke
MUSE	87/830187	IC; 9, 16 IC 41: Educational services in the filed of luxury goods and services consisting of travel, automobiles, boating, aviation, jewelry, wine, spirts, vacation properties, etc.	Robb Report Media LLC

 

For the reasons discussed below, Applicant respectfully requests that the Examining Attorney reconsider and withdraw the likelihood of confusion refusals and the anticipatory refusal.

A.  The Diluted Nature of MUSE for Artwork and Fashion Makes Confusion Unlikely

 

It is well settled that the prevalence of third-party registrations that contain a shared term can be probative to the extent that it shows that the term "has been adopted and registered by others in a particular field, indicating that the word is more suggestive than arbitrary in a particular field and, thus, that the registration of a mark consisting of that word for goods or services in the same or a related field should be given a more restricted scope of protection." Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983).

Such is the case here. Indeed, the diluted nature of the marks is evidenced by the coexistence of the 4 Cited Registrations, all of which are owned by 3 unrelated third-parties and which contain the literal element MUSE. The PTO has recognized the narrow scope of protection afforded the Cited Registrations by allowing them to coexist in Class 41 in carved-out, niche areas of the art and fashion.  Indeed, the definition of the word “muse” is a person who is “the source of inspiration for a creative artist.”  The word comes from Greek and Roman mythology for each of the nine goddesses who preside over the arts and sciences.  (Google Dictionary Exhibit 1.)

Just as the Cited Registrations have been allowed to coexist on the Register, and presumably in the marketplace, Applicant's MUSE trademark should be allowed to register for its Amended Goods.  The Cited Registrations and the Cited Applications have a different commercial impression that Applicant’s trademark and consumer confusion is not likely.

B.  There is Additional Evidence of Dilution

 

The Examining Attorney argues that 4 Cited Registrations bars Applicant's application for the trademark MUSE in Class 41.  However, in addition to the Cited Registrations, there 348 “live” MUSE and MUSE-themed trademarks listed in TESS.  Of those, 71 listings are in Class 41 and, of those, 53 MUSE trademarks are registered in Class 41.  (TESS List attached as Exhibit 2.)  Of the 53 MUSE registrations, approximately 34 list or include “art,” “fashion,” “jewelry,” and “music” in the ID of Services.

Accordingly, based on the plethora of third-party use of the word MUSE and the narrow scope afforded the coexisting marks, Applicant submits that confusion between Applicant's mark and the Cited Registrations is highly unlikely.

C.  Mere Possibility of Confusion is Not Enough; the PTO Must Show a Probability of Likelihood of Confusion

 

Finally, the Federal Circuit has stated that more than a mere possibility of confusion must be shown; instead it must be demonstrated that there is a probability of likelihood of confusion. See Witco Chemical Co. v. Whitfield Chemical Co., 164 USPQ 43, 44-45 (CCPA 1969) ("We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark law deals."); Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 21 USPQ2d 1388, 1391 (Fed. Cir.1992).

Applicant submits that, for the reasons detailed above, there is no probability of likelihood of confusion between Applicant's mark and the Cited Registrations listed in the Office Action.

CONCLUSION

 

In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusals to register and forward the application for publication.

 

Respectfully submitted,

Artpool LLC

/Mary F. Love/

Mary Frances Love
Attorney for Applicant

EVIDENCE
Evidence in the nature of pdf copy of the Argument, Exhibits 1 and 2 of the Argument has been attached.
Original PDF file:
evi_73156148213-20190408141656632673_._2019-04-08__-_ROA_Muse_Final.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_73156148213-20190408141656632673_._Exhibit_1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_73156148213-20190408141656632673_._Exhibit_2.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services in the nature of fashion shows; Fashion modeling for entertainment purposes; Hosting social entertainment events, namely, fashion shows, runway events and art and body art showcases, for others; Organization of fashion shows for entertainment purposes
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/08/2018 and first used in commerce at least as early as 10/08/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Entertainment services in the nature of fashion shows; Fashion modeling for entertainment purposes; Hosting social entertainment events, namely, fashion shows, runway events and art and body art showcases, for others; Hosting social entertainment events, namely, fashion shows, art and body art showcases, and runway events in the nature of fashion shows and art and body art showcases for others; Organization of fashion shows for entertainment purposesClass 041 for Entertainment services in the nature of fashion shows; Fashion modeling for entertainment purposes; Hosting social entertainment events, namely, fashion shows, art and body art showcases, and runway events in the nature of fashion shows and art and body art showcases for others; Organization of fashion shows for entertainment purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/08/2018 and first used in commerce at least as early as 10/08/2018 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Mary F. Love/     Date: 04/08/2019
Signatory's Name: Mary Frances Love
Signatory's Position: Attorney of record, D.C. bar member

Signatory's Phone Number: 202-247-7929

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: 88147549
Internet Transmission Date: Mon Apr 08 14:22:27 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904081422271
31216-88147549-6202d68e811a57fd9662c5df8
9b5187817174a616580f5504c1ee0483f714c776
2-N/A-N/A-20190408141656632673