Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 09, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on February 23, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response of July 27, 2019, the trademark examining attorney now issues the following new requirement(s): requirement for a substitute drawing without the registration symbol and information regarding applicant’s unacceptable voluntary disclaimer.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated February 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement(s):  submit an acceptable mark description, clear drawing, translation, transliteration of non-Latin characters, and payment of fees for removal from Teas Plus.  While the substitute drawing is clear, it is unacceptable for a different reason – it unacceptably includes the registration symbol. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  Drawing

•  Likelihood of Confusion under Section 2(d)

•  Translation of Foreign Wording in Mark

•  Transliteration of Foreign Wording in Mark

•  Mark Description

•  Payment of Fees

 

Also addressed below is applicant’s voluntary disclaimer of matter not included in the mark.

 

Drawing

Applicant must submit a new drawing with the ® symbol deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable.  See 37 C.F.R. §2.72; TMEP §807.14(a).  Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72; TMEP §§807.14 et seq.  For more information about deleting matter from the drawing, see the Drawing webpage.

 

Disclaimer

The applicant submitted the following voluntary disclaimer in its response:  No claim is made to the exclusive right to use ENCOUNTER??? apart from the mark as shown.  The applicant may not disclaim matter that is not part of the mark.  Here, the voluntary disclaimer includes matter that is not part of the mark - ???.  If the applicant was attempting to disclaim the entire mark, please note that the entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001).  If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable.  TMEP §1213.06.  Accordingly, the disclaimer is not accepted and will not be entered into the USPTO’s database.  See TMEP §714.05(a). 

 

Likelihood of Confusion under Section 2(d)

The refusal under Section 2(d) is maintained and continued. 

 

The applicant argued that the marks are different because the Hebrew characters are not included in registrant’s mark.  When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). 

 

Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part as to ENCOUNTER.

 

The applicant argued that its services are provided by a religious organization.  Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  In this case, the application use(s) broad wording to describe video and film production services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow film production services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).  Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

Mark Description

The requirement for an acceptable and accurate mark description is maintained and continued.  The applicant provided the following mark description in its response:  The mark consists of ENCOUNTER??? Word: ENCOUNTER+Hebrew Encounter the Living Word of God 365 days of the year.  The description includes wording and characters that are not part of the mark.  For the mark description, it is not necessary to include the translation and translation of the Hebrew characters.  The translation and transliteration are separate requirements apart from the mark description.  The following description is suggested, if accurate:  The mark consists of the stylized word “ENCOUNTER” followed by Hebrew characters.

 

Translation/Transliteration

The requirements for an acceptable and accurate translation and transliteration of the non-Latin characters in the mark are maintained and continued.  The translation and translation may not include wording or characters that are not part of the mark such as ???.   The translations and translation do not appear to be accurate based on the previously attached evidence which show that the non-Latin characters in the mark transliterate to “gimel vav hey” and this means “3,” “6,” and “5” in English. Please note also that the applicant filed two applications which both contain the same non-Latin characters, but include different translations and transliterations.  Companion Application Serial No. 88169007 is comprised solely of the same Hebrew characters that appear in the drawing of this application; the following statements are included in the office action response for that application:

 

The English translation of ??? in the mark is The Gospel of Jesus Christ. The wording ??? has no meaning in a foreign language.

 

The non-Latin characters in the mark transliterate to ??? and this means GVH in English. The non-Latin characters in the mark transliterate to ??? and this has no meaning in a foreign language.

 

This drawing in this application includes the word ENCOUNTER followed by the same Hebrew characters as the companion case; the following statements are included in the office action response for this application: 

 

The English translation of ENCOUNTER365 in the mark is ENCOUNTER???. The wording Gimmel, Vav, Hei has no meaning in a foreign language.

 

The non-Latin characters in the mark transliterate to ??? and this means Living Word of God in English. The non-Latin characters in the mark transliterate to ??? and this has no meaning in a foreign language.

 

For example, applicant may include the following translation and transliteration statement, if accurate:  The non-Latin characters in the mark transliterate to “gimel vav hey” and this means “3,” “6,” and “5” in English.

 

Payment of Fees

The applicant did not respond to the requirement to pay additional fees due to the removal of the application from Teas Plus status.  The requirement for applicant to pay the additional fee of $125 per class is maintained and continued.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.

 

Response:  Applicant must respond to all issues raised in this Office action and the previous February 23, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

ATTORNEY.  Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Mary Boagni/

Mary Boagni

Staff Attorney

Law Office 100

571-272-9130

mary.boagni@uspto.gov

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 09, 2019 for

U.S. Trademark Application Serial No. 88170601

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Mary Boagni/

Mary Boagni

Staff Attorney

Law Office 100

571-272-9130

mary.boagni@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”