Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  July 11, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

·       Section 2(d) Refusal – Likelihood of Confusion with Registered Marks

·       Mark Not Entitled to Register – Prior-filed Applications Pending

·       Amended Identification of Goods and Services Required

·       Clarification of Applicant’s Entity Type Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARKS

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3094882, 5609311, & 5469992.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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 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.

 

Summary of the Marks

 

Applicant has applied to register the mark ECHO in standard characters for the following goods and services:

 

International Class 9:  Phonograph records featuring music; Compact discs featuring music; Pre-recorded CDs featuring music; Musical sound recordings; Downloadable music files; Downloadable musical sound recordings; Downloadable film and video recordings featuring music; Downloadable images, messages, and information in the field of music, and commentary and articles about music.

 

International Class 35:  Entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists; Dissemination of advertising, promotional and publicity material related to entertainment, recording and performing artists; Advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of recording and performing artists through print, audio, video, digital and on-line mediums and by telecommunications.

 

International Class 38:  Delivery of digital music by electronic transmission; Providing access to digital music websites on the Internet; Transmission and delivery of digital music via the Internet; Delivery of music by telecommunications.

 

International Class 41:  Production of music; Music video production; Production of films and videos for entertainment purposes; Providing on-line music, non-downloadable; Production of sound and music video recordings; Entertainment services, namely, providing non-downloadable prerecorded music, films, videos, images, messages, and information in the field of music, and commentary and articles about music, all on-line via a global computer network including webpages and by telecommunications. 

 

The registered marks are as follows:

 

·       Reg. No. 3094882: ECHO in standard characters for various entertainment services in International Class 41.

·       Reg. No. 5609311: ECHO in standard characters for various advertising and marketing services in International Class 35.

·       Reg. No. 5469992: ECHO in standard characters for goods and services in International Classes 9, 38, 41, and 42.

 

Similarity of the Marks

 

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)); TMEP §1207.01(b).

 

In the present case, applicant’s mark is identical to the registered marks.

 

Applicant’s mark is ECHO and the registered marks are ECHO.  All marks appear in standard characters.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of the Goods and Services

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

First, applicant’s International Class 35 services are legally identical to the International Class 35 services listed in Reg. No. 5609311.  In this case, the registration uses broad wording to describe “advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising services, namely, promoting and marketing the goods and services of others through all public communication means; marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices”, which presumably encompasses all services of the type described, including applicant’s more narrow “entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists; dissemination of advertising, promotional and publicity material related to entertainment, recording and performing artists; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of recording and performing artists through print, audio, video, digital and on-line mediums and by telecommunications”.  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 Class 35 services and the services listed in Reg. No. 5609311 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)).

 

In addition, applicant’s International Class 38 services are legally identical to the services listed in International Class 38 in Reg. No. 5469992.  The registration uses broad wording to describe “telecommunications, namely, communication via portable electronic devices, portable media players, portable digital devices, for transmitting, accessing, receiving, uploading, downloading, encoding, decoding, streaming, displaying, storing, caching, and transferring voice, audio, visual images, data, books, photos, videos, text, content, audiovisual works, multimedia works, literary works, files, and other electronic works; streaming of audio, visual and audiovisual material via the internet or other computer or communications network; communications services, namely, transmission of voice, audio, visual images via global communications networks; interactive broadcasting and webcasting services over the internet and telecommunications networks”, which presumably encompasses all services of the type described, including applicant’s more narrow “delivery of digital music by electronic transmission; providing access to digital music websites on the internet; transmission and delivery of digital music via the internet; delivery of music by telecommunications”.  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 Class 38 services and the services listed in Reg. No. 5469992 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)).

 

Moreover, the services listed in the application in International Class 41 for “providing on-line music, non-downloadable” and “entertainment services, namely, providing non-downloadable prerecorded music” are virtually identical to the services listed in Reg. No. 5469992 for “entertainment, namely, providing non-downloadable prerecorded music.”  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these services.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s entertainment services are related to those specified in International Class 41 in Reg. No. 5469992.  

 

Finally, applicant’s goods and services are related to the International Class 41 services listed in Reg. No. 3094882.  Applicant’s services for “production of music” in International Class 41 are virtually identical to the “entertainment services, namely, production and remixing of musical audio recordings” listed in Reg. No. 3094882.  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these services.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).

 

Moreover, the attached Internet evidence from Cinq Music Group, Marshall Records, Century Music Group, Silver Side Productions, Atlantic Records, and Capitol Records establishes that entities that provide musical audio recording production services, like those listed in Reg. No. 3094882, commonly also provide online non-downloadable music, films, videos, images, messages and information in the field of music and downloadable music, video recordings, images, and information about music, like the applicant. The attached Internet evidence also establishes that entities that commonly provide musical production services, like applicant, also commonly provide advertising, marketing, and promotional services for recording and performing artists in International Class 35 and digital transmission of music in International Class 38, like those listed in Reg. Nos. 5609311 and 5469992.  Thus, applicant’s goods and services are considered related to the services listed in the registrations 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).

 

Furthermore, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and services as those of the applicant and the registrants in this case.  This evidence shows that the goods and services listed therein, namely, recorded and downloadable audio recordings, advertising and marketing of music, broadcasting and electronic transmission of audio, and music and video production and entertainment services, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Therefore, because the marks are confusingly similar and the goods and services are related, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.

 

MARK NOT ENTITLED TO REGISTER – PRIOR-FILED APPLICATIONS PENDING

 

The filing dates of pending U.S. Application Serial Nos. 88168044, 86617055, & 88125078 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

 

The wording “advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of recording and performing artists through print, audio, video, digital and on-line mediums and by telecommunications” in the identification of services in International Class 35 is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “delivery of music by telecommunications” in the identification of services in International Class 38 is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “entertainment services, namely, providing non-downloadable prerecorded music, films, videos, images, messages, and information in the field of music, and commentary and articles about music, all on-line via a global computer network including webpages and by telecommunications” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following wording, if accurate, with changes underlined:

 

International Class 35:  Entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists; Dissemination of advertising, promotional and publicity material related to entertainment, recording and performing artists; Advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of recording and performing artists through print, audio, video, digital and on-line mediums and through telecommunications networks.

 

International Class 38: Delivery of digital music by electronic transmission; Providing access to digital music websites on the Internet; Transmission and delivery of digital music via the Internet; Delivery of music by telecommunications networks.

 

International Class 41: Production of music; Music video production; Production of films and videos for entertainment purposes; Providing on-line music, non-downloadable; Production of sound and music video recordings; Entertainment services, namely, providing non-downloadable prerecorded music, films, videos, images, messages, and information in the field of music, and commentary and articles about music, all on-line via a global computer network including webpages and through telecommunications networks.

 

The identification of goods in International Class 9 is acceptable as written in the application.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

CLARIFICATION OF APPLICANT’S ENTITY TYPE REQUIRED

 

Applicant’s business name includes the foreign business designation “Limited”; however, applicant set forth “corporation” as the legal entity in the application.  This business designation is generally considered the equivalent of a “limited company” or “limited liability company”.  See TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).  Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See TMEP §803.03(i). 

 

Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “corporation” in this instance than to the legal entities listed in TMEP Appendix D.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

HOW TO RESPOND

 

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. 

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Hannah Gilbert/

Examining Attorney

Law Office 121

(571) 272-5029

hannah.gilbert@uspto.gov

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 11, 2019 for

U.S. Trademark Application Serial No. 88400893

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Hannah Gilbert/

Examining Attorney

Law Office 121

(571) 272-5029

hannah.gilbert@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 11, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”