To: | BROOKLYN NETS, LLC (ipgroup@nba.com) |
Subject: | U.S. Trademark Application Serial No. 88171625 - THE BLOCK - 34813-US-NF |
Sent: | September 16, 2019 01:59:28 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88171625
Mark: THE BLOCK
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Correspondence Address: Olympic Tower - 645 Fifth Avenue
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Applicant: BROOKLYN NETS, LLC
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Reference/Docket No. 34813-US-NF
Correspondence Email Address: |
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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: September 16, 2019
This Office action is supplemental to the previous Office action issued on February 26, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Section 2(d) Refusal—Likelihood of Confusion. See TMEP §§706, 711.02.
In the previous Office action, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. The examining attorney also cited a potentially-conflicting prior-filed application. Applicant responded by providing arguments and evidence against the refusal. The prior-filed application has since registered giving rise to this Office action. The Section 2(d) refusal is CONTINUED and MAINTAINED.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal—Likelihood of Confusion
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 87885327. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark THE BLOCK. Registrant’s mark is BLOCKART.
Both applicant and registrant’s marks prominently feature the word “block.” Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a similar commercial impression involving a city block.
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Services
The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared services 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 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 the present case, applicant has applied for the mark for use in connection with:
Class 41: Entertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions; the production and distribution of radio and television shows featuring basketball games, basketball events and programs in the field of basketball; conducting and arranging basketball clinics and camps, coaches clinics and camps, dance team clinics and camps and basketball games; entertainment services in the nature of personal appearances by a costumed mascot or dance team at basketball games and exhibitions, clinics, camps, promotions, and other basketball-related events, special events and parties; fan club services; in-arena fan club services; entertainment services, namely, providing a website featuring non-downloadable multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings in the field of basketball; providing news and information in the nature of statistics and trivia in the field of basketball; on-line non-downloadable games, namely, computer games, video games, interactive video games, and trivia games; entertainment services in the nature of fantasy basketball leagues; electronic publishing services, namely, publication of magazines, guides, newsletters, coloring books, and game schedules of others on-line through the Internet, all in the field of basketball; providing an online computer database in the field of basketball
Registrant has registered the cited mark for use in connection with:
Class 41: Arranging of seminars; Entertainment services, namely, arranging and conducting of competitions in the field of basketball; Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing an on-line computer game; Providing on-line digital publications in the nature of books in the field of science via the Internet; Providing on-line publications in the nature of e-books in the field of science; Providing on-line videos featuring music, not downloadable; Providing television programs, not downloadable, via video-on-demand transmission services; Providing an in-person cultural and entertainment forum in the field of film; Publication of texts, books, magazines and other printed matter; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members; Electronic desktop publishing; Entertainment information; Games equipment rental; Language interpreter services; Mobile library services; Organization of fashion shows for entertainment purposes; Providing amusement arcade services; Providing recreation facilities; Recreation information
The previously attached internet evidence from AAU, USA Basketball, and Philadelphia Youth Basketball shows that the same source that arranges and conducts competitions in the field of basketball, provides entertainment information, and performs other services like the services identified by registrant commonly also offers news in the field of basketball, websites featuring multimedia material in the field of basketball, camps and clinics in the field of basketball, and other services like those specified by applicant under the same mark.
Applicant and registrant’s services are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's services are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the services of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with a registered mark, and registration is properly refused on the Principal Register under Section 2(d).
ASSISTANCE
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.
How to respond. Click to file a response to this nonfinal Office action
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
RESPONSE GUIDANCE