Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 07, 2020

 

This Office action is in response to applicant’s communication filed on 12/17/2019.

 

In a previous Office action(s) dated 06/17/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 

• Partial Section 2(d) Refusal – Likelihood of Confusion
• Identification and Classification Requirement 

 

DEFERRED SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks for Class 041 definite identifications only. TMEP §704.02; see 15 U.S.C. §1052(d).

 

Please Note

 

The USPTO strongly discourages the use of the language of the international class headings or statements that the mark is used on all goods or services in a class to identify the goods or services for which registration of the mark is sought, and will generally require amendment of any such identification. See In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593, 1598 (TTAB 2014) (stating that "use of the words comprising a class heading as an identification in an application filed with the USPTO is not deemed to include all the goods or services in the established scope of that class"); TMEP §1402.07(a). See also TMEP §1402.01 regarding use of "included in this class" and similar wording. 

 

Note also that an applicant is required to submit a verified statement that the applicant is either using the mark in commerce or has a bona fide intention to use the mark in commerce on or in connection with all the goods and/or services set forth in the identification. It is unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class. If an applicant claims use or asserts a bona fide intention to use the mark on all goods/services in a particular class but only uses or intends to use the mark on some of those goods/services, the resulting registration could be void. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986).

 

A review of the merits of the application is deferred, and a search of the USPTO’s database of registered and pending marks is deferred in part, until applicant responds to this Office action by satisfying one of the following:

 

(1)       Specify the number of classes for which registration is sought and provide the filing fees for all such classes.

 

(2)       Delete class(es) from the application not covered by the fee(s) already submitted. 

 

See TMEP §§810.01, 1401.04. 

 

The application was filed online as a Trademark Electronic Application System (TEAS) Reduced Fee (RF) application and therefore the filing fee per class was $275.  See 37 C.F.R. §2.6(a)(1)(i)-(iii); TMEP §810.  The application identifies goods and/or services in at least 13 class(es), which require a total of fees in the amount of $1100.  Applicant submitted $275 with the application.  The fee(s) submitted was sufficient for only 1 class. 

 

After careful consideration of applicant’s evidence and arguments, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Partial Section 2(d) Refusal – Likelihood of Confusion
• Identification and Classification Requirement

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The stated refusal refers to the following goods and does not bar registration for the other goods and services:

            Entertainment and educational services; production and distribution of music, films and television shows; and all other services in International Class 41

 

The following refusal is made FINAL.

 

All previous evidence and arguments are incorporated by reference from the previous office action.

 

Registration of the applied-for mark remains refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4874103, 4612216, and 3349320.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant.  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.

 

Applicant’s mark is “MYSTERY GUEST BOX” with the identification of, inter alia, “Entertainment and educational services; production and distribution of music, films and television shows; and all other services in International Class 41” in Class 041.

 

The cited registration are:

 

MYSTERY BOX (Reg. No. 4874103) for “Entertainment services, namely, multimedia production services” in Class 041.

 

BOX (Reg. No. 4612216) for “Multimedia entertainment services in the nature of development, creation, production, and post-production services in the fields of film, fine art, photography, and publishing” in Class 041.

 

THE BOX (Reg. No. 3349320) for, inter alia, “entertainment services in the nature of radio programs in the fields of music, dance, news, sports, talk shows, and topics of general interest” in Class 041.

 

Comparison of 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).

 

Applying the above analysis, the marks are substantially similar. Specifically, the applicant’s mark incorporates the entirety of the registrants’ marks.  Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  Furthermore, the mere fact that applicant’s mark is plural of the identical portions of the registered marks would not obviate a likelihood of confusion.  An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

In the present case, the marks are identical in part.

 

Therefore, when viewed as a whole, applicant’s mark is substantially similar in sound, appearance, connotation and commercial impression to the registered mark.

 

Comparison of the Services

 

The 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).

 

Applying the second half of the test, the services are closely related. Determining likelihood of confusion is based on the description of the 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)).  

 

In this case, the application uses broad wording to “Entertainment and educational services; production and distribution of music, films and television shows; and all other services in International Class 41,” which presumably encompasses all services of the type described, including registrants’ more narrow “Entertainment services, namely, multimedia production services,” “Multimedia entertainment services in the nature of development, creation, production, and post-production services in the fields of film, fine art, photography, and publishing,” and “entertainment services in the nature of radio programs in the fields of music, dance, news, sports, talk shows, and topics of general interest.” 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 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 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 services are related.

 

Because the marks are confusingly similar, and the services are identical, overlapping, or otherwise related, a likelihood of confusion exists and registration is refused under Trademark Act Section 2(d).

 

Applicant makes no arguments in response to the above refusal.  Hence,  the refusal is maintained.

 

REFUSAL LIMITED TO SPECIFIC SERVICES

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)       Deleting the services to which the refusal pertains; or

 

(2)       Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods and 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).

 

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.

 

IDENTIFICATION AND CLASSIFICATION REQUIREMENT

 

Applicant has classified their goods and services in International Class 041.  However, the proper classification for each item is as shown below. 

 

Additionally, applicant has provided the application fee for only 1 international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

In addition, the wording “clothing” and “apparel” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” and “apparel” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and “apparel” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

Also, the identification for educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

Furthermore, the wording “and all other goods” and “and all other services” in the identification of services is indefinite and must be clarified by (1) specifying the common commercial or generic name for these services, or (2) deleting this wording.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar services,” “and related services”) that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a). 

 

In an identification, an applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the services set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

Moreover, the wording “toys” in the identification of services for International Class 028 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, the wording toys could encompass “Sex toys” in Class 010 and “Action figure toys” in Class 028.

 

The wording “Entertainment services; arranging and conducting entertainment and educational exhibitions, conferences, and symposia, producing video games and multimedia entertainment,” and “Games, toys and playthings, sporting goods, video games” in the identification of services and goods is indefinite and must be clarified because it is unclear what these goods and services are.  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 services.  See TMEP §1402.01.  If the goods and services have no common commercial or generic name, applicant must describe or explain the nature of the goods and services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, with suggestions in bold, if accurate: 

  

Class 010

 

Sex toys

     

Class 025

 

Clothing and wearing apparel, namely, Panties

  

Class 028

 

Flying discs; Game cards; paper party favors; punching bags; Backgammon Games, Action figure toys and Beanbags in the form of playthings, sporting goods, namely, carriers specially adapted for sport balls, Coin-operated video games and gaming machines

 

Class 041

 

Entertainment services, namely, cabarets; Educational services in the nature of beauty schools; production and distribution of music, films and television shows; fan club services; arranging and conducting entertainment and educational exhibitions, conferences, and symposia for producing video games and multimedia entertainment, namely, arranging and conducting business congresses for video game production; production and distribution of virtual reality games and augmented reality entertainment

  

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Jules Dean/

Trademark Attorney

United States Patent and Trademark Office

Law Office 120

Phone: (571) 272-5322

Jules.Dean@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 January 07, 2020 for

U.S. Trademark Application Serial No. 88437746

 

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. 

 

 

/Jules Dean/

Trademark Attorney

United States Patent and Trademark Office

Law Office 120

Phone: (571) 272-5322

Jules.Dean@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 January 07, 2020, 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.”