To: | Smith, Kyle (trademarks@nge.com) |
Subject: | U.S. Trademark Application Serial No. 88151737 - ALABASTER - 008000.0777 - Request for Reconsideration Denied - Return to TTAB |
Sent: | February 19, 2020 10:05:14 AM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88151737
Mark: ALABASTER
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Correspondence Address: |
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Applicant: Smith, Kyle
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Reference/Docket No. 008000.0777
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: February 19, 2020
Examining attorney notes that applicant’s amended identification of services has been accepted and entered. Furthermore, the refusal under Sections 1 and 45 has been withdrawn.
However, the final refusal under Section 2(d) is maintained and continued. Applicant argues the marks are not confusingly similar based on the additional word GRACE in the registered mark. As stated previously, any difference created by this additional wording is outweighed by the similarity of the common identical wording ALABASTER, which comprises the first word of the registered mark, and the entirety of the applied-for mark.
Next, applicant argues the services are provided through different channels of trade, and cites a case in which the court found different musical genres to be capable of distinguishing music-related services. First, this case was an inter partes proceeding where evidence of the scope of the services as actually used in commerce was relevant. In an ex parte proceeding, when analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic 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)).
In this case, the services in the application, as amended, and the registration(s) contain identical entries for “Entertainment services in the nature of live musical performances.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Therefore, applicant’s arguments regarding the genre of music that each party performs is unpersuasive, and applicant’s and registrant’s services are related.
As to applicant’s assertion that the consumers of the services are sophisticated and take care in making their purchases, examining attorney first notes that this is unsupported by any evidence. Additionally, 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), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Finally, applicant argues any potential confusion would be de minimis based on the differences in the services provided by the parties, and that there has been no actual confusion. As to the extent of the potential confusion, as stated previously, applicant’s attempts to limit the scope and trade channels of the services are improper, as these limitations are not present in the identification of services of either party. Additionally, “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
Therefore, the final refusal under Section 2(d) is maintained and continued.
Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated July 26, 2019 are maintained and continued:
See TMEP §§715.03(a)(ii)(B), 715.04(a).
In addition, the following requirement(s) and/or refusal(s) made final in that Office action are withdrawn:
See TMEP §§715.03(a)(ii)(B), 715.04(a).
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
John Sullivan
/John Sullivan/
Examining Attorney
Law Office 114
(571) 272-9519
john.sullivan@uspto.gov