Response to Office Action

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)

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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. 88340195 COLD(Standard Characters, see http://uspto.report/TM/88340195/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In refusing registration of Applicant's mark, the Examining Attorney stated that Applicant's COLD mark, when applied to Applicant's services, so resembles the prior registered COLD CASE FILES trademark/service mark (Registration No. 2,717,249, hereinafter the ?249 mark) as to be likely to cause confusion, or to cause mistake, or to deceive. The Examining Attorney has indicated that the following factors are most relevant to this analysis: similarity of the marks and relatedness of the goods/services. In view of the additional evidence and authorities submitted herewith, however, Applicant submits that there is no ?likelihood of confusion? under the applicable standards. The Examining Attorney has indicated that Applicant?s COLD service mark, when compared to the registered ?249 mark, is similar in commercial impression because Applicant?s mark is wholly subsumed in the registered mark. Additionally, the Examining Attorney asserts that both marks refer to ?cold? investigative cases, or ones which have remained unsolved for a long period of time, thus creating a similar commercial impression. Applicant respectfully disagrees with the Examining Attorney?s conclusion. First, Applicant asserts that the standard for a likelihood of confusion analysis is trademarks/service marks must be compared in their entirety and must be considered in connection with the particular goods/services with which they are used (see TMEP ? 1207.01). The marks at issue differ in the areas for relevant consideration including 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); TMEP ? 1207.01(b)-(b)(v). When taken in its entirety, the ?249 mark is dissimilar in overall appearance, sound, connotation, and commercial impression to Applicant?s standalone word mark. As a whole, the registered mark ?COLD CASE FILES? has a different appearance and sound from the present application at face value, merely considering the addition of terms ?CASE? and ?FILES?. With respect to connotation and commercial impression, the literal meaning of the term ?COLD CASE FILES? implies that, as the Examining Attorney has stated, the mark refers to investigative cases which remain unsolved over a long period of time, which presents a specific, narrow, and defined connotation and commercial impression. In fact, the Cambridge Dictionary defines ?cold case? as ?a case (= a series of events investigated by the police) that has not been solved? (see Exhibit A). Conversely, Applicant asserts that the standalone term ?COLD? does not in fact universally bear the same connotation and commercial impression. Indeed, the Cambridge Dictionary states that the term ?cold? has a number of definitions including: ?having a low temperature, esp. when compared to the temperature of the human body, and not hot or warm?, ?not showing or influenced by affection, kindness, or feeling; no friendly?, ?a common infection, esp. in the nose and throat, which often causes you to sneeze and cough, to feel tired, and sometimes to have pain the muscles?, ?if a case ( = a crime or series of events) that is being investigated is cold, it has not been solved and is no longer expected to be solved?, and ?cold weather or temperatures? (see Exhibit B). As such, the standalone term, when used in conjunction with entertainment services, could refer to any number of subjects including medical advice, meteorology, or investigative journalism, and the average consumer is unlikely to instantly deduce the subject matter from the outset. Further, Applicant asserts that it is unlikely the average consumer would routinely and systematically disregard the words ?CASE FILES? in the full ?249 mark and thus assume that the ?249 mark and the present application originate from the same source. Thus, Applicant asserts that the present application does not bear sufficient resemblance in overall appearance, sound, connotation, or commercial impression, when considering the whole of the ?249 mark, to meet the applicable standard. Second, Applicant notes that there are currently 178 records on the U.S. Patent and Trademark Office database containing the term ?COLD? in International Class 41. In particular, Applicant notes the following registrations: BLOOD RUNS COLD (Reg. No. 5759321), COLD BLOODED THE CLUTTER FAMILY MURDERS (Reg. No. 5650302), COLD CASE K9 (Reg. No. 4732580), COLD COCKLE (reg. No. 4696883), COLD FRONT PRODUCTIONS (Reg. No. 4127776), COLD HARD TRUTH (Reg. No. 5466836), COLD HEARTED (Reg. No. 5542611), COLD WEST (Reg. No. 5751027), COLD WORLD WEB SERIES (Reg. No. 5521126), FREEZING COLD TAKES (Reg. No. 5601942), and ICE COLD GOLD (Reg. No. 4544508) (attached hereto as Exhibit C). Given the number of registered marks containing the term ?COLD? which occupy a similar space to the ?249 mark and the present application, it is clear that if consumers are capable of distinguishing between the ?249 mark and the registered marks identified above, consumers would also be capable of distinguishing between the ?249 mark and Applicant?s mark in commerce. With respect to relatedness of the goods/services, the Examining Attorney has indicated that Applicant?s service mark uses broad wording to describe its entertainment services and such broad wording presumably encompasses all goods/services of the type described including registrant?s more narrow programming. Additionally, the Examining Attorney states that the goods/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. Applicant respectfully disagrees with the Examining Attorney?s conclusion. First, by this paper, Applicant hereby amends the description of services associated with this application as follows: ?Entertainment services, namely, providing a website featuring photographic, video, and prose presentations in the field of current and historical events and information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information, news and commentary in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon, not including providing such information, news, and commentary on cable television programming; entertainment services, namely, providing podcasts in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information and news in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon, not including providing such information and news on cable television programming? in International Class 41. Applicant notes that the description of goods/services associated with the ?249 registration are: ?Pre-recorded audio and video discs featuring criminal investigations? in International Class 9 and ?Cable television programs featuring criminal investigations? in International Class 41. Applicant hereby asserts that the addition of the language ?not including ? on cable television programming? in Applicant?s description sufficiently narrows the description of services associated with this mark to exclude registrant?s goods/services. Second, it is well recognized that similar marks can co-exist in the market where the goods or services on which those marks are used are distinguishable. For example, in The Trustees of Columbia University in the City of New York v. Columbia/HCA Healthcare Corp., 43 U.S.P.Q.2d (BNA) 1083, 964 F. Supp. 733 (S.D.N.Y. 1997), the parties disputed the right to use the mark COLUMBIA for healthcare services. Where the plaintiff provided medical education services and the defendant provided healthcare services via licensed physicians, the Court concluded an eight day trial that ?the services rendered by the parties are distinguishable.? Furthermore, when comparing the marks, it is ?a basic rule of comparison of marks?[t]hat marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake.? Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 U.S.P.Q. 272 (C.C.P.A. 1974). While it is understood that purchasers sophisticated or knowledgeable in a particular field are not necessarily immune to source confusion, ?circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion?. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006) (TMEP ? 1207.01(d)(vii)). In this instance, Applicant?s mark is used in conjunction with podcasting, website content, and related services, including audio, short video, and written reporting related to investigative journalism. Podcasting was developed in 2004 and, as a digital medium, consumers of this and related services are typically relatively technologically savvy (see Exhibit D). Such consumers are focused on obtaining information ?on demand?. The services are solely available online and through well-known third party websites which provide access to similar digital content. Given that podcasting and web content is free from government regulation, no licenses are required to broadcast programming or transmit information and the associated services are freely available. Thus, the channel of trade associated with these services is clearly defined. Conversely, the description of goods/services for the cited ?249 mark is specific to cable television programs and prerecorded audio and video discs, which represents an entirely different medium for information transmission than the present application. Consumers of these goods/services must either subscribe to cable television services or purchase prerecorded discs for personal viewing, which are entirely dissimilar to Applicant?s ?on the go? services. Further, Applicant notes that there are a number of television programs that bear the term ?COLD? in their title, including ?Cold?, ?Cold Case?, ?Cold Justice?, and ?Cold Squad?, among others (see Exhibit E). Thus, it is illogical to assume that consumers would be all goods and services offered under a mark containing the term ?COLD? within the medium of television originate from the same source, let alone within a different medium. Based on the factors, the amendments to the description, and the additional information provided herein, Applicant respectfully submits that there is no likelihood of confusion and requests that the refusal to register under Section 2(d) be withdrawn and that the mark be approved for publication.

EVIDENCE
Evidence in the nature of exhibits containing dictionary definitions, United States Patent and Trademark Office records, blog information on podcasts, and Google search results has been attached.
Original PDF file:
evi_64147135158-20191202171142261075_._COLD_Office_Action_Response.pdf
Converted PDF file(s) ( 53 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, providing a website featuring photographic, video, and prose presentations in the field of current and historical events and information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information, news and commentary in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; entertainment services, namely, providing podcasts in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing a website featuring information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 11/14/2018 and first used in commerce at least as early as 11/14/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Entertainment services, namely, providing a website featuring photographic, video, and prose presentations in the field of current and historical events and information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information, news and commentary in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information, news and commentary in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon, not including providing such information, news, and commentary on cable television programming; entertainment services, namely, providing podcasts in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing a website featuring information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information and news in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon, not including providing such information and news on cable television programmingClass 041 for Entertainment services, namely, providing a website featuring photographic, video, and prose presentations in the field of current and historical events and information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information, news and commentary in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon, not including providing such information, news, and commentary on cable television programming; entertainment services, namely, providing podcasts in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon; providing information and news in the field of current and historical events relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon, not including providing such information and news on cable television programming
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 11/14/2018 and first used in commerce at least as early as 11/14/2018 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for Providing a website featuring information relating to domestic abuse, violence, aggressive behavior, illegal activities, immoral activities, public interest, news, and noteworthy phenomenon
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 11/14/2018 and first used in commerce at least as early as 11/14/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of screenshot of a web page featuring the services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

The applicant's current attorney information: Michael L. Dowdle. Michael L. Dowdle, is located at

      55 NORTH 300 WEST
      SALT LAKE CITY, Utah 84180
      US
The docket/reference number is Cold (Word).

The phone number is 801-575-5555.

The email address is legal@ksl.com

The applicants proposed attorney information: Michael L. Dowdle. Other appointed attorneys are J. David Pearce; Jason E. Englund; David B. Tingey. Michael L. Dowdle, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      55 NORTH 300 WEST
      SALT LAKE CITY, Utah 84180
      United States
The docket/reference number is Cold (Word).

The phone number is 801-575-7500.

The email address is legal@ksl.com

Michael L. Dowdle 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: MICHAEL L. DOWDLE. MICHAEL L. DOWDLE, is located at

      55 NORTH 300 WEST
      SALT LAKE CITY, Utah 84180
      US
The docket/reference number is Cold (Word).

The phone number is 801-575-5555.

The email address is legal@ksl.com; kmip@kmclaw.com

The applicants proposed correspondence information: Michael L. Dowdle. Michael L. Dowdle, is located at

      55 NORTH 300 WEST
      SALT LAKE CITY, Utah 84180
      United States
The docket/reference number is Cold (Word).

The phone number is 801-575-7500.

The email address is legal@ksl.com; kmip@kmclaw.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Michael L. Dowdle/      Date: 12/02/2019
Signatory's Name: Michael L. Dowdle
Signatory's Position: Attorney of Record, Utah Bar member
Signatory's Phone Number: 801-575-7500


Response Signature
Signature: /Michael L. Dowdle/     Date: 12/02/2019
Signatory's Name: Michael L. Dowdle
Signatory's Position: Attorney of Record, Utah Bar member

Signatory's Phone Number: 801-575-7500

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:    MICHAEL L. DOWDLE
   
   
   55 NORTH 300 WEST
   SALT LAKE CITY, Utah 84180
Mailing Address:    Michael L. Dowdle
   55 NORTH 300 WEST
   SALT LAKE CITY, Utah 84180
        
RAM Sale Number: 88340195
RAM Accounting Date: 12/02/2019
        
Serial Number: 88340195
Internet Transmission Date: Mon Dec 02 17:31:08 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912021731087
07998-88340195-700176462be4195e8d0f4bc39
3847dcb5adf61ca41adcdd64f23559dfc42a37a-
CC-31075104-20191202171142261075