Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88319144 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 108 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88319144/mark.png |
| LITERAL ELEMENT |
FULL COURT PRESS |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| The Office Action dated May 13, 2019 indicates that you are refusing registration because Applicant?s mark FULL COURT PRESS, when used on the
identified services, would likely be confused with the registered mark Registration No. 3,898,563 (FULL COURT PRESS), used on non-overlapping, unrelated services. See Exhibit A, Cited Registration.
The Applicant respectfully requests that you withdraw your refusal under Trademark Act, Section 2(d), 15 U.S.C. Section 1052(d) and allow the application to proceed to publication on the grounds set
forth below. I. The Respective Marks Are Not Used on Overlapping or Even Related Services. You note in your Office Action that a key consideration in any likelihood of confusion analysis is ?the
relatedness of the compared goods and services.? Applicant agrees. However, in reviewing the services identified in the Applicant?s application and cited registration, there is no evidence that the
services provided by the respective parties are related. In determining whether marks are likely to cause confusion among customers, even identical marks can be used in such a manner that customer
confusion is not likely, as is the case here. In this case, Applicant is using the mark FULL COURT PRESS on a hard-hitting, no-nonsense weekend political show. As Applicant announced in its press
release for the show, ?The new weekend political show will focus on how policy actions, political decisions, and national events impact local communities across the country through a mix of
substantive interviews of newsmakers, roundtable discussions, and both on-the-ground and investigative reports from local stations outside the beltway.? See Exhibit B, Applicant Press Release. The
Applicant?s services as set forth in its application are ?an ongoing program in the field of politics and news issues broadcast, streamed, and transmitted over television, cable, satellite,
subscription services, and syndication services, and broadcast, streamed, and transmitted over the Internet and global computer networks to digital, wireless, and mobile devices.? In contrast, the
Cited Registrant?s claimed services are online and printed publications, namely business training materials to teach soft skills and employee workplace skills, such as business networking,
negotiating, and customer relationship management. See Exhibit A, Cited Registration. Moreover, the Cited Registrant?s services are all publication-related, with no claim to any entertainment
services, cable or television broadcast, or other program-related services. Consequently, there does not appear to be any overlap or any relation between the types of services to be provided by
Applicant, namely a political news program, and Cited Registrant, a publisher of workplace skills materials. II. The Respective Marks Serve Wholly Different Functional Purposes. In determining
whether customers are likely to be confused, you must also consider how customers will encounter the respective marks. In this instance, despite the fact that neither the Applicant nor the Registrant
limits the customers to whom the services will be provided, the customers will encounter the marks under wholly different scenarios because the purpose of the marks are wholly different. As mentioned
above, Applicant?s service is an ongoing political program focused on how national policy can impact people locally. People are encountering the Applicant?s services on a programmatic basis, whether
on broadcast television, cable television, television subscription services, or over the Internet. When viewing Applicant?s services, customers are watching an interview or roundtable format where
the host is drilling down into the impact of current policies and political news. In contrast, the Cited Registrant?s services seem to be directed towards employees improving specific soft skills and
business skills in the workplace. Moreover, the Cited Registrant?s services appear to be directed to print and online publications, such as workbooks and other training materials to assist customers
in improving workplace skills. Simply put, it is not likely that customers, even if they were presumed to be the same class of purchasers, are going to be confused that a hard-hitting political show
and a publisher of workplace skills enhancement books emanate from the same source, as they serve functional purposes that are wholly different. III. Because the Marks Are Used on Dissimilar Services
and Serve Wholly Different Functions, the Marks Should be Able to Co-Exist Without Customer Confusion. Because the key determination in any trademark inquiry is whether customers are likely to be
confused that the services emanate from the same source, even identical marks must be evaluated by the market realities of the use. In this case, the marks are used/to be used on non-overlapping,
unrelated services and will be encountered by customers for completely unrelated functional purposes. In light of the strength of these factors, it is unlikely that customers will be confused that
the services emanate from the same source. For these reasons, the Applicant requests that you permit the mark to proceed to publication and withdraw the Section 2(d) claim. IV. Pending Applications
With respect to the cited pending applications, while Applicant reserves the right to address these applications more fully if they register, such full discussion may not be necessary because these
applications are directed to even less related services, namely, apparel, charitable fundraising services, and youth clinics focused on basketball and teaching life skills for youth. See Exhibit C,
Cited Applications. As with the Cited Registration, these services are not overlapping or related and even if encountered by the same customers, would not serve the same functional purpose such that
customers would be confused that they emanate from the same source. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_41418131-20190916125531999324_._Full_Court_Press_Exhibit_A.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0003.JPG |
| ORIGINAL PDF FILE |
evi_41418131-20190916125531999324_._FullCourtPress.Press_Release.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0005.JPG |
| ORIGINAL PDF FILE |
evi_41418131-20190916125531999324_._Full_Court_Press_Exhibit_C1.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0006.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0007.JPG |
| ORIGINAL PDF FILE |
evi_41418131-20190916125531999324_._Full_Court_Press_Exhibit_C2.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0008.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\191\88319144\xml5\ROA0009.JPG |
| DESCRIPTION OF EVIDENCE FILE |
Exhibit A- Cited Registration Exhibit B- Applicant Press Release Exhibits C1 and C2- Cited Applications |
| ATTORNEY SECTION (current) |
| NAME |
Pam P Smith |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
BALCH & BINGHAM LLP |
| STREET |
1901 SIXTH AVE N, SUITE 1500 |
| CITY |
BIRMINGHAM |
| STATE |
Alabama |
| POSTAL CODE |
35203 |
| COUNTRY |
US |
| PHONE |
205-226-3404 |
| FAX |
205-488-5891 |
| EMAIL |
ppsmith@balch.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| ATTORNEY SECTION (proposed) |
| NAME |
Pam P Smith |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
BALCH & BINGHAM LLP |
| STREET |
1901 SIXTH AVE N, SUITE 1500 |
| CITY |
BIRMINGHAM |
| STATE |
Alabama |
| POSTAL CODE |
35203 |
| COUNTRY |
United States |
| PHONE |
205-226-3404 |
| FAX |
205-488-5891 |
| EMAIL |
ppsmith@balch.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (current) |
| NAME |
PAM P SMITH |
| FIRM NAME |
BALCH & BINGHAM LLP |
| STREET |
1901 SIXTH AVE N, SUITE 1500 |
| CITY |
BIRMINGHAM |
| STATE |
Alabama |
| POSTAL CODE |
35203 |
| COUNTRY |
US |
| PHONE |
205-226-3404 |
| FAX |
205-488-5891 |
| EMAIL |
ppsmith@balch.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Pam P Smith |
| FIRM NAME |
BALCH & BINGHAM LLP |
| STREET |
1901 SIXTH AVE N, SUITE 1500 |
| CITY |
BIRMINGHAM |
| STATE |
Alabama |
| POSTAL CODE |
35203 |
| COUNTRY |
United States |
| PHONE |
205-226-3404 |
| FAX |
205-488-5891 |
| EMAIL |
ppsmith@balch.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/ppsmith/ |
| SIGNATORY'S NAME |
Pam P Smith |
| SIGNATORY'S POSITION |
Attorney of record, Alabama bar member |
| SIGNATORY'S PHONE NUMBER |
2052263404 |
| DATE SIGNED |
09/16/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Sep 16 13:06:32 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-X.XX.XX.XXX-201
90916130632172704-8831914
4-610524b64fba3cd42f7cf0f
b35e9dd81f28997f36c43e19e
d265985073ec3c-N/A-N/A-20
190916125531999324 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88319144 FULL COURT PRESS(Standard Characters, see http://uspto.report/TM/88319144/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Office Action dated May 13, 2019 indicates that you are refusing registration because Applicant?s mark FULL COURT PRESS, when used on the identified services, would likely be confused with the
registered mark Registration No. 3,898,563 (FULL COURT PRESS), used on non-overlapping, unrelated services. See Exhibit A, Cited Registration. The Applicant respectfully requests that you withdraw
your refusal under Trademark Act, Section 2(d), 15 U.S.C. Section 1052(d) and allow the application to proceed to publication on the grounds set forth below. I. The Respective Marks Are Not Used on
Overlapping or Even Related Services. You note in your Office Action that a key consideration in any likelihood of confusion analysis is ?the relatedness of the compared goods and services.?
Applicant agrees. However, in reviewing the services identified in the Applicant?s application and cited registration, there is no evidence that the services provided by the respective parties are
related. In determining whether marks are likely to cause confusion among customers, even identical marks can be used in such a manner that customer confusion is not likely, as is the case here. In
this case, Applicant is using the mark FULL COURT PRESS on a hard-hitting, no-nonsense weekend political show. As Applicant announced in its press release for the show, ?The new weekend political
show will focus on how policy actions, political decisions, and national events impact local communities across the country through a mix of substantive interviews of newsmakers, roundtable
discussions, and both on-the-ground and investigative reports from local stations outside the beltway.? See Exhibit B, Applicant Press Release. The Applicant?s services as set forth in its
application are ?an ongoing program in the field of politics and news issues broadcast, streamed, and transmitted over television, cable, satellite, subscription services, and syndication services,
and broadcast, streamed, and transmitted over the Internet and global computer networks to digital, wireless, and mobile devices.? In contrast, the Cited Registrant?s claimed services are online and
printed publications, namely business training materials to teach soft skills and employee workplace skills, such as business networking, negotiating, and customer relationship management. See
Exhibit A, Cited Registration. Moreover, the Cited Registrant?s services are all publication-related, with no claim to any entertainment services, cable or television broadcast, or other
program-related services. Consequently, there does not appear to be any overlap or any relation between the types of services to be provided by Applicant, namely a political news program, and Cited
Registrant, a publisher of workplace skills materials. II. The Respective Marks Serve Wholly Different Functional Purposes. In determining whether customers are likely to be confused, you must also
consider how customers will encounter the respective marks. In this instance, despite the fact that neither the Applicant nor the Registrant limits the customers to whom the services will be
provided, the customers will encounter the marks under wholly different scenarios because the purpose of the marks are wholly different. As mentioned above, Applicant?s service is an ongoing
political program focused on how national policy can impact people locally. People are encountering the Applicant?s services on a programmatic basis, whether on broadcast television, cable
television, television subscription services, or over the Internet. When viewing Applicant?s services, customers are watching an interview or roundtable format where the host is drilling down into
the impact of current policies and political news. In contrast, the Cited Registrant?s services seem to be directed towards employees improving specific soft skills and business skills in the
workplace. Moreover, the Cited Registrant?s services appear to be directed to print and online publications, such as workbooks and other training materials to assist customers in improving workplace
skills. Simply put, it is not likely that customers, even if they were presumed to be the same class of purchasers, are going to be confused that a hard-hitting political show and a publisher of
workplace skills enhancement books emanate from the same source, as they serve functional purposes that are wholly different. III. Because the Marks Are Used on Dissimilar Services and Serve Wholly
Different Functions, the Marks Should be Able to Co-Exist Without Customer Confusion. Because the key determination in any trademark inquiry is whether customers are likely to be confused that the
services emanate from the same source, even identical marks must be evaluated by the market realities of the use. In this case, the marks are used/to be used on non-overlapping, unrelated services
and will be encountered by customers for completely unrelated functional purposes. In light of the strength of these factors, it is unlikely that customers will be confused that the services emanate
from the same source. For these reasons, the Applicant requests that you permit the mark to proceed to publication and withdraw the Section 2(d) claim. IV. Pending Applications With respect to the
cited pending applications, while Applicant reserves the right to address these applications more fully if they register, such full discussion may not be necessary because these applications are
directed to even less related services, namely, apparel, charitable fundraising services, and youth clinics focused on basketball and teaching life skills for youth. See Exhibit C, Cited
Applications. As with the Cited Registration, these services are not overlapping or related and even if encountered by the same customers, would not serve the same functional purpose such that
customers would be confused that they emanate from the same source.
EVIDENCE
Evidence in the nature of Exhibit A- Cited Registration Exhibit B- Applicant Press Release Exhibits C1 and C2- Cited Applications has been attached.
Original PDF file:
evi_41418131-20190916125531999324_._Full_Court_Press_Exhibit_A.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_41418131-20190916125531999324_._FullCourtPress.Press_Release.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_41418131-20190916125531999324_._Full_Court_Press_Exhibit_C1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_41418131-20190916125531999324_._Full_Court_Press_Exhibit_C2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
The applicant's current attorney information: Pam P Smith. Pam P Smith of BALCH & BINGHAM LLP, is located at
1901 SIXTH AVE N, SUITE 1500
BIRMINGHAM, Alabama 35203
US
The phone number is 205-226-3404.
The fax number is 205-488-5891.
The email address is ppsmith@balch.com
The applicants proposed attorney information: Pam P Smith. Pam P Smith of BALCH & BINGHAM LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located
at
1901 SIXTH AVE N, SUITE 1500
BIRMINGHAM, Alabama 35203
United States
The phone number is 205-226-3404.
The fax number is 205-488-5891.
The email address is ppsmith@balch.com
Pam P Smith submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S.
Commonwealth or territory.
The applicant's current correspondence information: PAM P SMITH. PAM P SMITH of BALCH & BINGHAM LLP, is located at
1901 SIXTH AVE N, SUITE 1500
BIRMINGHAM, Alabama 35203
US
The phone number is 205-226-3404.
The fax number is 205-488-5891.
The email address is ppsmith@balch.com
The applicants proposed correspondence information: Pam P Smith. Pam P Smith of BALCH & BINGHAM LLP, is located at
1901 SIXTH AVE N, SUITE 1500
BIRMINGHAM, Alabama 35203
United States
The phone number is 205-226-3404.
The fax number is 205-488-5891.
The email address is ppsmith@balch.com
SIGNATURE(S)
Response Signature
Signature: /ppsmith/ Date: 09/16/2019
Signatory's Name: Pam P Smith
Signatory's Position: Attorney of record, Alabama bar member
Signatory's Phone Number: 2052263404
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: PAM P SMITH
BALCH & BINGHAM LLP
1901 SIXTH AVE N, SUITE 1500
BIRMINGHAM, Alabama 35203
Mailing Address: Pam P Smith
BALCH & BINGHAM LLP
1901 SIXTH AVE N, SUITE 1500
BIRMINGHAM, Alabama 35203
Serial Number: 88319144
Internet Transmission Date: Mon Sep 16 13:06:32 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-201909161306321727
04-88319144-610524b64fba3cd42f7cf0fb35e9
dd81f28997f36c43e19ed265985073ec3c-N/A-N
/A-20190916125531999324
