UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 2/12/2019

 

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.  

 

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.

 

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 Nos. 5646174, 5198041, 4559134, 4416519, 4398320 and 2689098.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant applied to register the mark VIRGIN for speaker enclosures; speaker microphones; audio speaker enclosures; audio speakers; audio speakers for automobiles; audio speakers that may be attached with adhesive to the abdominal area of pregnant women for the purpose of transmitting music or sounds to the fetus, not for medical purposes; audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; bass speakers; conical attachment to an audio speaker for diffusing and distributing sound as it is transmitted from the speaker; consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters; electric audio playback units with lights and speakers; fire alarm and emergency evacuation devices, namely, fire alarm control panels, smoke detectors, heat detectors, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns, and speakers; loud speaker systems; loud speakers; portable vibration speakers; public address (pa) and sound system accessories, namely, microphone stands, speaker stands, microphone cables, speaker cables, speaker boxes and sound mixers; signal processors for audio speakers; soundbar speakers; stands adapted for stereos and audio speakers; wireless speakers; wireless indoor and outdoor speakers

 

The registered mark are VIRGIN ORBIT for satellite navigational apparatus, namely, a satellite-aided navigation system; satellites for scientific purposes to be sent into orbit; astronomical spectrographs; electric automatic solar tracking sensors; cables for electrical and optical signal transmission systems; astrometric measuring apparatus and instruments, namely, solar tracking sensors for satellites; satellite navigation devices, namely, satellite-aided navigation systems, satellite navigational system, namely, a global positioning system (GPS); signal processors; signal transmission apparatus for transmission of communication; parts and fittings of all of the aforesaid, namely, solar panels for production of electricity, electric sensors, electronic sensors for measuring solar data, receivers of electronic signals, decoding apparatus, and cameras; VIRGIN AMERICA and design for apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank recording discs; compact discs, DVDs and other digital recording media, namely, downloadable audio and video recordings featuring music and movies; calculating machines, data processors, computers; computer software for use to access an on-demand entertainment system; computer hardware; computer games software; computer software recorded onto CD Rom, namely, computer game software; data processing apparatus; mobile telephones; televisions; headphones; mobile telephone covers; apparatus for use in broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of radio and television programmes, and other audio, video and image data, namely, signal processors; apparatus for use in broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of digital media content, namely signal processors; audio, video and audio-visual recordings featuring music and movies; interactive video game programmes; computer programmes for interactive television and for interactive games and/or quizzes; magnetically encoded cards for carrying data, namely, multifunction cards for financial services, charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; VIRGIN MOBILE and design for mobile telephones, telephones, modems, and accessories therefor, namely, batteries, battery chargers, power supplies, charger adapters, phone belt clips, phone covers, phone cases, ear phones, headphones, wireless receivers, microphones, data synchronization cables, electrical wires, secure digital (SD) memory cards, and car kits for the adaptation of portable communication apparatus and instruments for vehicular use comprising power cables, hands free microphones, cell phone holders, and car chargers;   VIRGIN for apparatus for recording, transmitting, storing or reproducing sound or images; blank magnetic data carriers; blank digital storage media for sound or video recordings; pre-recorded electronic and digital media featuring radio, music, blogs, podcasts, DJs, pictures, videos, books, movies and television; computer software for use in personal computers, computer game consoles and consumer electronics products for use in the transmission, reception and storage of data, images and digital information in the fields of radio programs, music, movies, books, television, games of skill, games of chance and podcasts and videos featuring radio programs, music, movies, books, television, games of skill and games of chance; software downloadable from the Internet for transmission, reception and storage of voice, data, images, e-mail and digital information; compact discs featuring music; radios; earphones for radios; radio broadcasting sets, namely, transmitting and receiving apparatus for radio broadcasting; mobile radio broadcasting units, namely, transmitting and receiving apparatus for radio broadcasting; integrated audio and video apparatus incorporating radio and television receivers; radiotelephones; sound recordings, namely, musical recordings and video recordings featuring radio, music, blogs, podcasts, DJs, videos, books, movies and television; downloadable electronic publications in the nature of books, magazines, articles and brochures featuring radio programs, music, movies, books, television, podcasts and video; radio programs, music, videos, sound, images, text and data downloadable from the Internet or other computer networks; communications and telecommunications devices, namely, computers, wireless telephones and satellite telephones. mobile telecommunications apparatus and equipment, namely, batteries, battery chargers, power supplies, charger adapters, phone clips, phone covers, phone cases, ear phones, headphones, receivers, microphones, car kits for the adaptation of portable communication apparatus and instruments for vehicular use, antennas, antenna adapters, cables, hands free microphones, phone holders, car chargers, data cables, electrical wires and handsets; GPS receivers; keyboards, digital pens, memory cards, digital maps and digital map displays in the form of satellite navigational systems; mobile digital devices, namely, MP3 players, mobile telephones, smart phones, digital cameras and personal digital assistants; accessories and replacement parts for mobile phones, mobile digital devices, smart phones, digital cameras and computers, namely, batteries, battery chargers, cigarette lighter adapters, belt clips, carrying cases, headphones, headsets, speakers and mouse mats; cameras; computer e-commerce software to allow users to safely place orders and make payments in the field of electronic business transactions via a global computer network or telecommunications network; computer software and devices for navigation; downloadable software in the nature of a mobile application for transmission, reception and storage of voice, data, images, e-mail and digital information; systems and apparatus for electric money transactions, namely, blank smart cards and smart card readers; calculators; software for use in the secure identification, storage, transmission and retrieval of data; software relating to identity verification and fraud prevention; electronic encryption devices to enable secure storage, retrieval and transmission of confidential customer information used by individuals, banking and financial institutions. computer software for use in connection with accessing and conducting electronic banking and financial services via global computer networks and telecommunication networks; computer software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA and web-based environment; computer software for the provision of financial trading services, securities exchange services, automated methods of crossing financial orders and electronic financial and crossing exchanges; magnetically encoded credit cards, debit cards, cash cards and cheque guarantee cards; VIRGIN for apparatus for recording, transmitting, storing or reproducing sound or images; blank magnetic data carriers; blank digital storage media for sound or video recordings; pre-recorded electronic and digital media featuring radio, music, blogs, podcasts, DJs, pictures, videos, books, movies and television; computer software for use in personal computers, computer game consoles and consumer electronics products for use in the transmission, reception and storage of data, images and digital information in the fields of radio programs, music, movies, books, television, podcasts, videos, games of skill and games of chance; software downloadable from the Internet for transmission, reception and storage of voice, data, images, e-mail and digital information; compact discs featuring music; radios; earphones for radios; radio broadcasting sets, namely, transmitting and receiving apparatus for radio broadcasting; mobile radio broadcasting units, namely, transmitting and receiving apparatus for radio broadcasting; integrated audio and video apparatus incorporating radio and television receivers; radiotelephones; sound recordings, namely, musical recordings and video recordings featuring radio, music, blogs, podcasts, DJs, videos, books, movies and television; downloadable electronic publications in the nature of books, magazines, articles, brochures in the field of radio programs, music, movies, books, television, podcasts and video; radio programs, music, videos, sound, images, text and data downloadable from the Internet or other computer networks; communications and telecommunications devices, namely, computers, wireless telephones and satellite telephones. mobile telecommunications apparatus and equipment, namely, batteries, battery chargers, power supplies, charger adapters, phone clips, phone covers, phone cases, ear phones, headphones, receivers, microphones, car kits for the adaptation of portable communication apparatus and instruments for vehicular use, antennas, antenna adapters, cables, hands free microphones, phone holders, car chargers, data cables, electrical wires and handsets; GPS receivers; keyboards, digital pens, memory cards, digital maps and digital map displays in the form of satellite navigational systems; mobile digital devices, namely, MP3 players, mobile telephones, smart phones, digital cameras and personal digital assistants; accessories and replacement parts for mobile phones, mobile digital devices, smart phones, digital cameras and computers, namely, batteries, battery chargers, cigarette lighter adapters, belt clips, carrying cases, headphones, headsets, speakers and mouse mats; cameras; computer e-commerce software to allow users to safely place orders and make payments in the field of electronic business transactions via a global computer network or telecommunications network; computer software and devices for navigation; downloadable software in the nature of a mobile application for transmission, reception and storage of voice, data, images, e-mail and digital information; systems and apparatus for electric money transactions, namely, blank smart cards and smart card readers; calculators; software for use in the secure identification, storage, transmission and retrieval of data; software relating to identity verification and fraud prevention; electronic encryption devices to enable secure storage, retrieval and transmission of confidential customer information used by individuals, banking and financial institutions. computer software for use in connection with accessing and conducting electronic banking and financial services via global computer networks and telecommunication networks; computer software for providing an online financial platform; computer software for the provision of financial trading services, securities exchange services, automated methods of crossing financial orders and electronic financial and crossing exchanges; magnetically encoded credit cards, debit cards, cash cards and cheque guarantee cards; VIRGIN for mobile telephones; telephones; modems; batteries; battery chargers; cigarette lighter adapters; dashboard mounts; hands-free headsets; carrying cases; belt clips. The marks are identical and very similar.

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Comparison of Goods

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

The goods of the parties are closely related: both audio equipment includes speakers, cases and other devices, which can be used and/or sold together. The examining attorney must consider any goods in the registrant’s normal fields of expansion to determine whether the registrant’s goods are related to the applicant’s identified goods under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v). 

 

In this case, since the applicant and the registrant have the similar marks, customers are likely to be confused and believe that the applicant’s goods emanate from the same source as the registrant’s goods. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i). 

 

Prior Filed Applications

The filing date of pending U.S. Application Serial No. 88031268 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Kevon L. Chisolm/

Trademark Examining Attorney

Law Office 103

571-272-9270

kevon.chisolm@uspto.gov

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/12/2019 FOR U.S. APPLICATION SERIAL NO. 88228250

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 2/12/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Kevon L. Chisolm/

Trademark Examining Attorney

Law Office 103

571-272-9270

kevon.chisolm@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.