To: | Meyerson, Joshua (jm@hillvalleyltd.com) |
Subject: | U.S. Trademark Application Serial No. 88445836 - GOLDEN EAGLE - N/A |
Sent: | August 23, 2019 11:33:12 AM |
Sent As: | ecom122@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88445836
Mark: GOLDEN EAGLE
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Correspondence Address: 26910 GRAND CENTRAL PARKWAY, APT. 32-S
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Applicant: Meyerson, Joshua
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Reference/Docket No. N/A
Correspondence Email Address: |
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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.
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
· Partial Section 2(d) Refusal—Likelihood of Confusion
· Specimen Refusal—Services Unsupported
· Duplicate Application
PARTIAL SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION:
Note: The following refusal only applies to applicant’s “Providing online non-downloadable comic books and graphic novels” in Class 041.
Summary of the Marks and Goods/Services
Applicant’s GOLDEN EAGLE, in standard characters, is refused for:
Registration No. 1217546, GOLD EAGLE, in standard characters, is for:
Registration No. 1236253, GOLD EAGLE, with a design, is for:
Registration No. 2306563, GOLD EAGLE, in standard characters, is for:
Basis for Likelihood of Confusion
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/or 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/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.
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).
Applicant’s mark is GOLDEN EAGLE in standard characters, and the registrations are GOLD EAGLE in standard characters and with a design. The marks share highly similar wording, and 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).
Additionally, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
This similarity in appearance, in conjunction with the shared meaning of the marks in referencing a bird in a particular color, and with consumers’ general recollection, creates a shared commercial impression that would likely confuse consumers as to the origin of applicant’s services and the registrations’ goods.
Therefore, applicant’s mark is similar to those in the registrations.
Relatedness of the Goods/Services
The attached Internet evidence from
· http://www.marvel.com/comics/unlimited with http://shop.marvel.com/only-you-can-save-spider-man-book-paperback-personalizable/mp/24069/1000239/ and http://shop.marvel.com/entertainment/mn/1000207/#callURL=%252Fmarvel%252Fstore%252FDSIProcessWidget%253FcatalogId%253D10002%2526Nr%253DAND(pPublished%25253A1%25252CpBuyable%25253A1)%2526Ne%253D1000201%2526Nu%253DpProductID%2526langId%253D-1%2526storeId%253D50051%2526N%253D1000240%2526categoryId%253D11763%2526templateId%253DWidth-3_4-ProductList%2526widgetName%253Ditems_listing%2526widgetObjId%253DobjItemsListing%2526zoneName%253DDisneyNavigationPageZone%2526groupByDimension%253D%2526initialN%253D1000207%2526sortKey%253D%2526navNum%253D96%2526numDim%253D&sort=sortProductsMostPopular,
· http://www.dcuniverse.com/comics/book/injustice-2-2017-71/cfc8cea8-d534-437e-9a63-a12e2694cd05 with http://www.shopdcentertainment.com/collections/all-books/products/all-star-superman and http://www.shopdcentertainment.com/collections/all-dvd, and
· http://digital.darkhorse.com/accounts/login/?next=/read/d6f6fb94e75d4dc98dfa39a7d4f13857 with http://www.amazon.com/Legend-Zelda-Hyrule-Historia/dp/1616550414?ref_=Oct_BSellerC_4397_2&pf_rd_p=33daa971-b52a-59fd-9e79-af75d97d8e86&pf_rd_s=merchandised-search-6&pf_rd_t=101&pf_rd_i=4397&pf_rd_m=ATVPDKIKX0DER&pf_rd_r=GFQNCC2G6PTAK3Z6K5HE&pf_rd_r=GFQNCC2G6PTAK3Z6K5HE&pf_rd_p=33daa971-b52a-59fd-9e79-af75d97d8e86http://www.amazon.com/Legend-Zelda-Hyrule-Historia/dp/1616550414?ref_=Oct_BSellerC_4397_2&pf_rd_p=33daa971-b52a-59fd-9e79-af75d97d8e86&pf_rd_s=merchandised-search-6&pf_rd_t=101&pf_rd_i=4397&pf_rd_m=ATVPDKIKX0DER&pf_rd_r=GFQNCC2G6PTAK3Z6K5HE&pf_rd_r=GFQNCC2G6PTAK3Z6K5HE&pf_rd_p=33daa971-b52a-59fd-9e79-af75d97d8e86
establishes that the same entity commonly provides online comics/graphic novels alongside physical books and discs, they are marketed under the same mark, and they are sold or provided through the same trade channels. Thus, applicant’s services and the registrations’ goods are considered related 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).
Conclusion
Taken together, the similarity of the marks and the relatedness of applicant’s services to the registrations’ goods result in the determination that there is a likelihood of confusion. Therefore, registration is refused under Section 2(d) of the Trademark Act.
SPECIMEN REFUSAL—SERVICES UNSUPPORTED:
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014.
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that the images make no mention of any identified services, using only the wording “about the film” and “representation.”
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “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 or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.
DUPLICATE APPLICATION:
GENERAL RESPONSE GUIDELINES
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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
Sjogren, Jeffrey
/Jeffrey Sjogren/
Examining Attorney - Law Office 122
Phone: 571-272-5279
Fax: 571-273-5578
RESPONSE GUIDANCE