To: | Mens Rea, Inc. (paulo@paiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88298626 - DR. ZODIAK'S MOONROCK - N/A |
Sent: | May 06, 2020 06:07:20 AM |
Sent As: | ecom130@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88298626
Mark: DR. ZODIAK'S MOONROCK
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Correspondence Address: 16830 VENTURA BLVD., SUITE 360
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Applicant: Mens Rea, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: May 06, 2020
On September 23, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87848866. The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 goods and/or 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 the Marks in General
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Comparison of the Goods/Services in General
Analysis of the Marks
Applicant’s mark, DR. ZODIAK'S MOONROCK, is confusingly similar to the registered marks, DJ MOONROCKK and MOONROCK, in meaning or connotation and overall commercial impression. Each of the marks feature the identical wording MOONROCK. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); TMEP §1207.01(b)(ii)-(iii).
With respect to the DJ MOONROCKK, it is noted that the term DJ is disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the dominant feature in registrant’s mark is MOONROCKK which, while spelled slightly differently with the additional “K”, is phonetically identical to applicant’s MOONROCK element.
Applicant has added the wording DR. ZODIAK'S to one registrant’s MOONROCK 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.
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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, a consumer encountering the mark DR. ZODIAK'S MOONROCK in connection with applicant’s goods/services will incorrectly believe that the goods/services originate from the same source as each registrant’s DJ MOONROCKK and MOONROCK goods/services.
Analysis of the Goods/Services
Applicant’s goods/services include:
“Electronic cigarette batteries; Chargers for electronic cigarettes; Downloadable music files; Visual recordings and audiovisual recordings featuring music; audio recordings featuring music” in Class 009
“Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of live musical performances” in Class 041
Registrant’s goods/services are:
Applicant incorrectly states in its 10/17/2019 Response: “The goods of the cited registration (MOONROCK, Reg. No. 5854177) are batteries and chargers specifically for cell phones.” A closer look at the actual wording in the registration reveals that this is not the case. Only the “battery charging equipment, namely, portable single-use and rechargeable battery packs for cellphones” are limited to cell phones. The other goods have no limitation whatsoever. Since registrant’s identification of goods are “batteries” with no limitation as to the type, the wording legally encompasses “electronic cigarette batteries”. The “battery chargers” are identical.
In this case, the registration uses broad wording to describe its batteries and chargers, which presumably encompasses all goods of the type described, including applicant’s more narrow batteries and chargers. 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 goods 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.
Clearly, the parties’ batteries and chargers are legally identical. Furthermore, the attached Internet evidence consisting of third party websites showing David Guetta, Martin Garrix, and Afrojack offer disk jockey services as well as music-related goods/services, establishes that the same entity commonly manufactures, produces, or provides the relevant goods/services and markets the goods/services under the same mark, that the relevant goods/services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods/services are similar or complementary in terms of purpose or function, e.g., music products and related services. Thus, applicant’s and registrant’s goods/services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Summary of Analysis
A consumer encountering the mark DR. ZODIAK'S MOONROCK in connection with applicant’s batteries and chargers and music-related goods/services will incorrectly believe that the goods/services originate from the same source as each registrant’s DJ MOONROCKK and MOONROCK batteries and chargers and music-related services. As a result, because of the confusingly similar marks and closely related and potentially identical goods/services, registration is refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
PARTIAL REFUSAL
“Electronic cigarette batteries; Chargers for electronic cigarettes; Downloadable music files; Visual recordings and audiovisual recordings featuring music; audio recordings featuring music” in Class 009
“Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of live musical performances” in Class 041
(1) Deleting the goods and/or services to which the refusal pertains; or
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
If applicant does not respond to this Office action within the six-month period for response, the following will be deleted from the application:
“Electronic cigarette batteries; Chargers for electronic cigarettes; Downloadable music files; Visual recordings and audiovisual recordings featuring music; audio recordings featuring music” in Class 009
“Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of live musical performances” in Class 041
The application will then proceed with the remaining goods/services. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
/Ms. Tasneem Hussain/
Trademark Examining Attorney
Law Office 130
tasneem.hussain@uspto.gov (preferred)
571.272.8273
RESPONSE GUIDANCE