To: | Chris Long Enterprises, LLC (jsardella@htflawyers.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88354813 - CHALK - N/A |
Sent: | 5/17/2019 3:14:06 PM |
Sent As: | ECOM106@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 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88354813
MARK: CHALK
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Chris Long Enterprises, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/17/2019
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.
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Likelihood of confusion refusal
n Requirement to amend disclaimer
n Requirement to amend description of goods/services
LIKELIHOOD OF CONFUSION REFUSAL
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.
The Marks at Issue
The applicant seeks to register CHALK in stylized font for:
Class 9: Downloadable computer application software for handheld devices, namely, software for sports games, sports information, and sports instruction downloadable and playable on a handheld device
Class 25: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bandanas; Bathing suits; Bathrobes; Beachwear; Belts; Body suits; Boots; Bow ties; Caps being headwear; Coats; Dresses; Ear muffs; Garter belts; Gloves; Gym suits; Hats; Head wear; Headbands; Hoods; Hosiery; Jackets; Jeans; Jumpsuits; Kerchiefs; Leggings; Leotards; Lingerie; Mittens; Money belts; Neckties; Overalls; Pajamas; Pants; Parkas; Robes; Scarves; Shirts; Shoes; Shorts; Skirts; Sleepwear; Socks; Sport shirts; Sweat bands; Sweat pants; Sweaters; Swimsuits; T-shirts; Tank tops; Tops as clothing; Tracksuits; Tuxedos; Underwear; Vests; Visors being headwear; Wrist bands as clothing; Swimming caps
Class 35: Maintaining a registry of sports memorabilia; On-line retail store services featuring sports memorabilia; Retail store services featuring sports memorabilia
Class 41: Providing a website featuring entertainment information; Providing an Internet website portal featuring entertainment news and information specifically in the field of sports, politics and lifestyle
The registered marks are:
U.S. Registration No. 5075783 CHALK in stylized font for:
Class 9: Computer game software; downloadable mobile applications for online games
Class 41: Online entertainment services in the form of fantasy sports leagues; entertainment services consisting of a web-based system and an online portal so that customers can participate in online games, operation and coordination of fantasy sports leagues and game tournaments
U.S. Registration No. 4542218 CHALK NYC (with NYC disclaimed) for:
Class 25: Belts; Blazers; Blouses; Boots; Cardigans; Denims; Dresses; Gloves; Hats; Jackets; Jeans; Leggings; Lingerie; One-piece garments for children; Overalls; Pants; Scarfs; Shirts; Shoes; Skirts; Sleepwear; Slippers; Socks; Sport coats; Stockings; Sweaters; Sweatshirts; T-shirts; Tights; Tops; Undergarments
Class 35: online retail store services featuring clothing and clothing accessories
U.S. Registration No. 4791557 CHALK DIGITAL (with DIGITAL disclaimed) for:
Class 35: Advertising and advertisement services; advertising and marketing services, namely, promoting the goods and services of others; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through digital and on-line medium
The Marks are Highly Similar
All of these marks feature the common term, CHALK. The stylization in this application and in U.S. Registration No. 5075783 is too minor to change the commercial impression of that mark vis a vis this mark. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Moreover, the additional wording in this and the other two registered marks are descriptive and only tell consumers a feature of the associated goods/services. They do not change the commercial impression of CHALK as it is used in these marks, in association with the stated goods. 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); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The Goods/Services are Identical or Closely Related
As to U.S. Registration No. 5075783 (CHALK, stylized), the goods include computer game software, downloadable mobile game apps and online, web-based services that enable users to participate in online games, and fantasy sports leagues and game tournaments. The applicant’s goods and services include downloadable game apps, and a website featuring entertainment and sports information. The applicant’s goods are broad enough to encompass those of the registrant. Therefore, as noted below, they are considered identical for purposes of Section 2(d). Further, the applicant’s services are broad enough to include information about the services provided by this registrant.
In this case, the application uses broad wording to describe its mobile sports and game apps, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow mobile game apps. 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/services 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.
As to U.S. Registration No. 4542218 (CHALK NYC), the registrant’s goods include clothing items and online retail clothing stores, while the applicant’s goods include clothing and online retail stores featuring sports memorabilia.
The registrant’s goods include sweaters, tops and shirts, which are broad enough to encompass sports jerseys, sweaters and shirts that are marketed as sports memorabilia. The examining attorney has attached sample websites showing these types of items sold as sports memorabilia. See, e.g., http://collectiblesofthegame.com/, http://www.icons.com/ and http://encoreselect.com/. Therefore, these goods are closely related under Section 2(d).
As to U.S. Registration No. 4791557 (CHALK DIGITAL), the registrant’s services include advertising and marketing services, namely, promoting the goods and services of others, while the applicant’s services include maintaining a registry of sports memorabilia, which can be used as a method of promoting goods of others.
Therefore, registration is refused under Section 2(d) of the Trademark Act.
DISCLAIMER
In this case, a disclaimer for CHALK is not necessary. An applicant may voluntarily disclaim matter in a mark regardless of whether the matter is registrable. TMEP §1213.01(c); see 15 U.S.C. §1056(a). However, a disclaimer of this matter is not required.
Since the applicant may not disclaim the entire mark, the applicant must delete this disclaimer. For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
GOODS/SERVICES
The wording noted below in the identification of goods and services is indefinite and must be clarified because its nature is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may substitute the following wording, if accurate. Suggested changes and additions are in bold:
Class 9: Downloadable computer application software for handheld devices, namely, software for playing sports games, obtaining and sharing sports information, and viewing sports instruction downloadable and playable on a handheld device
Class 25: no changes required
Class 35: no changes required
Class 41: no change required
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@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.