To: | Simon & Schuster, Inc. (trademarks@cbs.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88156717 - AVID READER PRESS - N/A |
Sent: | 11/16/2018 5:08:06 PM |
Sent As: | ECOM110@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 Attachment - 29 Attachment - 30 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88156717
MARK: AVID READER PRESS
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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: Simon & Schuster, 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: 11/16/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION UNDER TRADEMARK ACT SECTION 2(d)
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration. If the cited registration describes the goods and services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods and services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant seeks to register the mark “AVID READER PRESS.” Registration Nos. 2735956, 3852052 and 4414123 are for the marks “AVID PRESS,” “AVID,” “AVID WEEKLY” and “AP AVID PRESS” and design. Applicant’s mark is similar with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant. Applicant’s mark uses the same primary term AVID and PRESS as the already registered marks. Applicant’s mark uses the same primary terms READER and PRESS as the already registered mark. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Because the applicant’s mark uses the same primary terms AVID and PRESS as the already registered mark, the marks convey the same overall commercial impression. See: In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975). Based on the marks alone, there is a likelihood of confusion.
Applicant’s goods are described as “Downloadable publications, namely, electronic books on a variety of topics; downloadable electronic publications in the nature of fiction and non-fiction on a variety of topics.” Registrant’s goods are “Educational publications, namely, training manuals in the field of secondary school subjects (English, English as a second language, mathematics, science, social science, world languages) and college preparatory materials; Educational publications, namely, teaching and training books, hand-outs, training manuals and work books for teachers and counselors in the field of elementary school subjects, namely, core academic subjects and student success skills; books and brochures featuring elementary school courseware in core academic subjects and students success skills; books, instructional sheets, informational sheets, manuals and guides in the fields of student success skills, student organizational skills, writing, reading, and promoting student collaboration and partnership; Downloadable electronic publications in the nature of teaching and training materials in the field of core academic subjects and student success skills; Educational publications, namely, books and training manuals in the field of core academic subjects and student success skills.” The goods of applicant are closely related to the goods of registrant. The applicant’s and registrant’s goods are likely to be encountered by the same purchasers in the same channel of trade. Given the confusing similarity of the marks, consumers familiar with the registrant’s goods are likely to believe that applicant’s goods come from the same source.
The compared goods 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). In this case, applicant’s goods are identical or closely related to the goods in the already registered mark, thus there is a likelihood of confusion.
In this case, applicant’s marks are highly similar and identical in part to the already registered marks, and the goods are highly similar or identical, thus there is a likelihood of confusion under Trademark act section 2(d). Based on the above reasons, a likelihood of confusion must be found to exist. Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
DISCLAIMER OF DESCRIPTIVE WORDING
Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “READER PRESS” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). READER is defined as “one that reads.” www.merriamwebster.com. PRESS is defined as “a printing or publishing establishment.” Id. In this case, the term READER describes a characteristic of the consumers of the goods, that they are for readers. The term PRESS describes the applicant itself, a publisher. Because each term describes a characteristic of the goods, the terms are descriptive and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “READER PRESS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF GOODS INDEFINITE
The identification of goods is indefinite and must be clarified because the term “downloadable electronic publications” is overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must indicate the specific type of publications, e.g., books, magazines etc. Applicant may adopt the following identification, if accurate:
Downloadable publications, namely, electronic books on a variety of topics; downloadable electronic publications, namely, [indicate the specific goods, e.g., books] in the nature of fiction and non-fiction on a variety of topics. (Class 9)
An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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.
/Caroline E. Wood/
Examining Attorney
Law Office 110
571-272-9243
caroline.wood@uspto.gov
(responses are not accepted via e-mail)
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.