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:  August 22, 2019

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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
• Prior-filed applications (advisory)

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4537908, 4572603, 4529746, 4564379, 3862142, 4035777, 4176105, 4361690, 4455269, 3532627, 4543712, 4836986, 4314478, 4177191, 4314920, 4314930, 4314931, 4355601, 5161347, 5448731, 5428637, 4695868, 4937568, 5715751, 5715752, 5188070, 5273961, 4814903, 5028678, 5387349, 5387883 & 5396184.  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/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.

Applicant is seeking registration for the following goods:  “audio speakers; batteries and battery chargers; earphones; headphones; virtual reality headsets; game headphones,” in International Class 9 in connection with the mark “BEATS”.  The cited registrations identify the following goods:  “carrying cases for headphones,” in International Class 9, “audio speakers for home theater systems,” in International Class 9, “electronic cables, namely, audio electric cables and cable connectors; power cables and cable connectors; audio speakers from home theater systems,” in International Class 9, “provision of live entertainment and recorded entertainment, namely, live musical performances by musical bands and DJs; musical entertainment in the nature of live visual and audio performances by musical groups and musical groups and DJs; exhibitions, namely, exhibitions concerning music,” in International Class 41, “cell phones; smart phones; laptop computers; computer accessories, namely, computer monitors; media players for automobiles, DVD players for automobiles, CD players for automobiles, digital audio players for automobiles; digital video players for automobiles,” in International Class 9, “headphones,” in International Class 9, “audio speakers; loudspeakers,” in International Class 9, “audio speakers; car audio speakers; loudspeakers; headphones; personal headphones for use with sound transmitting systems,” in International Class 9, “loudspeakers, audio speakers, car audio speakers,” in International Class 9, “electronic cables, namely, audio cables and cable connectors,” in International Class 9, “audio equipment, namely, headphones,” in International Class 9, “audio related products and equipment, namely, speakers; and docking stations for portable music players,” in International Class 9, “instrumental door panels,” in International Class 12, “headphones,” in International Class 9, “headphones; personal headphones for use with sound transmitting systems,” in International Class 9, “headphones,” in International Class 9, “headphones,” in International Class 9, “audio speakers; loudspeakers,” in International Class 9, “headsets for mobile phones; headphones, personal headphones for use with sound transmitting systems,” in International Class 9, “headphones; computer software for processing playing digital music files,” in International Class 9, “speaker stands; protective cases for speakers; remote controls for speakers; plug adaptors; chargers for use with headphones and speakers; carrying cases for headphones and portable speakers; portable speaker mount for bicycles; computer software, namely, software for updating wireless speakers and headphones; handheld devices for controlling speakers; computer software for use in controlling speakers, amplifiers; downloadable audio and video recordings featuring music, music performances, and music videos; prerecorded music, namely, digital downloads; computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, video, text and multimedia content,” in International Class 9, “computers; car speakers,” in International Class 9, “headphones,” in International Class 9, “earphones, audio cables,” in International Class 9, “providing access to digital music websites on the internet, on-line forums for transmission of messages among computer users concerning music, streaming audio material on the internet,” in International Class 38, “entertainment competitions in the field of music, and music contests, providing non-downloadable playback or pre-recorded music via a global computer network; providing an Internet website portable featuring links to musical artist websites and music performance and event information; providing a website featuring the ratings, reviews, and personal recommendations of users on events and activities in the field of music and music concerts, live performances, fairs, festivals, exhibition, expositions; providing non-downloadable per-recorded music, and music videos for use on mobile communications devices via a global computer network and wireless networks,” in International class 41, “audio speakers; loud speakers; earphones; headphones; microphones; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; covers, bags and cases adapted or shaped to contain audio players,” in International Class 9, “audio recordings featuring music; downloadable audio recordings featuring music; prerecorded music, namely, digital downloads; computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, video, text and multimedia content,” in International Class 9, “streaming of audio content via electronic communication networks, local and global computer networks and wireless communication networks; streaming of music to users online via a communication network,” in International Class 38, “providing an online database via a communication network featuring entertainment information in the field of music,” in International Class 41, audio recordings featuring music; downloadable audio recordings featuring music; prerecorded music, namely, digital downloads; computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, video, text and multimedia content,” in International Class 9, “streaming of audio content via electronic communication networks, local and global computer networks and wireless communication networks; streaming of music to users online via a communication network,” in International Class 38, “providing an online database via a communication network featuring entertainment information in the field of music,” in International Class 41, “broadcasting of voice, music, audio, video, multimedia via radio by means of telecommunications networks; broadcasts and transmission of streamed music, audio, video, and multimedia content by means of telecommunication networks,” in International Class 38, “arranging, organizing, conducting, and presenting concerts, live music performances, music special events; production, distribution, and presentation of radio programs and sound recordings in the fields of entertainment news, music; providing ongoing radio and audio programs in the fields of entertainment news, music; providing radio, internet, and satellite music programming by means of telecommunications networks, computer networks, the internet, satellite, radio, and wireless communications networks; provision of live entertainment, namely, musical performances; providing websites featuring information in the field of music; entertainment services, namely, providing on-line music reviews,” in International Class 41, “earphones; audio cables; battery chargers, charging cables, and power adaptors for use with earphones; carrying cases for earphones, “in International Class 9, “headphones,” in International Class 9  in connection with the marks “BEATS”, “BEATS BY DR. DRE”, “BEATS” “BEATSAUDIO”, “BEATS”, “BEATS”, “BEATS BY DR. DRE”, “BEATS”, “BEATS BY DR. DRE”, “BEATS”, “BEATBOX”, “BEATS”, “BEATS STUDIO”, “BEATS PRO”, “BEATS EXECUTIVE”, “URBEATS”, “BEATS PILL”, “POWERBEATS BY DR. DRE”, “BEATS ACOUSTIC ENGINE”, “BEATS”, “BEATSAUDIO”, “BEATS TOUR”, “POWERBEATS”, “BEATS 1”, “BEATS 1”, “BEATS EP”, “BEATSMUSIC”, “BEATS MUSIC”, “BEATS 1”, “BEATS 1”, “BEATS X”(stylized) and “BEATS SOLO”.  The trademark examining attorney notes that the cited registrations are all owned by the same registrant.  

Marks are Identical (U.S. Reg. Nos. 4537908, 4529746, 3862142, 4035777, 4361690, 3532627, 4836986 & 5448731)

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

In the present case, applicant’s mark is “BEATS” and registrant’s marks are “BEATS”.  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 registrant’s respective goods and/or services.  Id.

Therefore, the marks are confusingly similar. 

Marks are Similar (U.S. Reg. Nos. 4572603, 4564379, 4176105, 4455269, 4543712, 4314478, 4177191, 4314920, 4314930, 4314931, 4355601, 5161347, 5428637, 4695868, 4937568, 5715751, 5715752, 5188070, 5273961, 4814903, 5028678, 5387349, 5387883 & 5396184)

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).

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).

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

Here, applicant is seeking registration for the mark “BEATS”, displayed in standard characters.  The cited registrations are for the marks “ “BEATS BY DR. DRE”, “BEATSAUDIO”, “BEATS BY DR. DRE”, “ “BEATS BY DR. DRE”, “BEATBOX”, “BEATS STUDIO”, “BEATS PRO”, “BEATS EXECUTIVE”, “URBEATS”, “BEATS PILL”, “POWERBEATS BY DR. DRE”, “BEATS ACOUSTIC ENGINE”, “BEATSAUDIO”, “BEATS TOUR”, “POWERBEATS”, “BEATS 1”, “BEATS 1”, “BEATS EP”, “BEATSMUSIC”, “BEATS MUSIC”, “BEATS 1”, “BEATS 1” and “BEATS SOLO”, also displayed in standard characters “BEATS X”, displayed in a slightly stylized manner.  The visual, phonetic and commercial impressions derived from the respective marks is substantially similar.  The trademark examining attorney submits that it is well-established through case law that 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).

Here, all of the respective marks contain the source-identifying term “BEATS”,  This, coupled with the identical, overlapping and related nature of the goods/services further substantiates the likelihood of confusion finding.   Further, since a standard character claim allows an applicant or registrant to display a mark in any font or stylization, applicant could display its mark in a manner identical to that of registrant and vice-versa with respect to all but the stylized registration. 

Based on the foregoing, the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.

Goods and/or Services are Related (Identical in Part)

Applicant is seeking registration for the following goods:  “audio speakers; batteries and battery chargers; earphones; headphones; virtual reality headsets; game headphones,” in International Class 9.  The cited registrations identify the following goods:  “carrying cases for headphones,” in International Class 9, “audio speakers for home theater systems,” in International Class 9, “electronic cables, namely, audio electric cables and cable connectors; power cables and cable connectors; audio speakers from home theater systems,” in International Class 9, “provision of live entertainment and recorded entertainment, namely, live musical performances by musical bands and DJs; musical entertainment in the nature of live visual and audio performances by musical groups and musical groups and DJs; exhibitions, namely, exhibitions concerning music,” in International Class 41, “cell phones; smart phones; laptop computers; computer accessories, namely, computer monitors; media players for automobiles, DVD players for automobiles, CD players for automobiles, digital audio players for automobiles; digital video players for automobiles,” in International Class 9, “headphones,” in International Class 9, “audio speakers; loudspeakers,” in International Class 9, “audio speakers; car audio speakers; loudspeakers; headphones; personal headphones for use with sound transmitting systems,” in International Class 9, “loudspeakers, audio speakers, car audio speakers,” in International Class 9, “electronic cables, namely, audio cables and cable connectors,” in International Class 9, “audio equipment, namely, headphones,” in International Class 9, “audio related products and equipment, namely, speakers; and docking stations for portable music players,” in International Class 9, “instrumental door panels,” in International Class 12, “headphones,” in International Class 9, “headphones; personal headphones for use with sound transmitting systems,” in International Class 9, “headphones,” in International Class 9, “headphones,” in International Class 9, “audio speakers; loudspeakers,” in International Class 9, “headsets for mobile phones; headphones, personal headphones for use with sound transmitting systems,” in International Class 9, “headphones; computer software for processing playing digital music files,” in International Class 9, “speaker stands; protective cases for speakers; remote controls for speakers; plug adaptors; chargers for use with headphones and speakers; carrying cases for headphones and portable speakers; portable speaker mount for bicycles; computer software, namely, software for updating wireless speakers and headphones; handheld devices for controlling speakers; computer software for use in controlling speakers, amplifiers; downloadable audio and video recordings featuring music, music performances, and music videos; prerecorded music, namely, digital downloads; computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, video, text and multimedia content,” in International Class 9, “computers; car speakers,” in International Class 9, “headphones,” in International Class 9, “earphones, audio cables,” in International Class 9, “providing access to digital music websites on the internet, on-line forums for transmission of messages among computer users concerning music, streaming audio material on the internet,” in International Class 38, “entertainment competitions in the field of music, and music contests, providing non-downloadable playback or pre-recorded music via a global computer network; providing an Internet website portable featuring links to musical artist websites and music performance and event information; providing a website featuring the ratings, reviews, and personal recommendations of users on events and activities in the field of music and music concerts, live performances, fairs, festivals, exhibition, expositions; providing non-downloadable per-recorded music, and music videos for use on mobile communications devices via a global computer network and wireless networks,” in International class 41, “audio speakers; loud speakers; earphones; headphones; microphones; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; covers, bags and cases adapted or shaped to contain audio players,” in International Class 9, “audio recordings featuring music; downloadable audio recordings featuring music; prerecorded music, namely, digital downloads; computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, video, text and multimedia content,” in International Class 9, “streaming of audio content via electronic communication networks, local and global computer networks and wireless communication networks; streaming of music to users online via a communication network,” in International Class 38, “providing an online database via a communication network featuring entertainment information in the field of music,” in International Class 41, audio recordings featuring music; downloadable audio recordings featuring music; prerecorded music, namely, digital downloads; computer software for use in the delivery, distribution and transmission of digital music and entertainment-related audio, video, text and multimedia content,” in International Class 9, “streaming of audio content via electronic communication networks, local and global computer networks and wireless communication networks; streaming of music to users online via a communication network,” in International Class 38, “providing an online database via a communication network featuring entertainment information in the field of music,” in International Class 41, “broadcasting of voice, music, audio, video, multimedia via radio by means of telecommunications networks; broadcasts and transmission of streamed music, audio, video, and multimedia content by means of telecommunication networks,” in International Class 38, “arranging, organizing, conducting, and presenting concerts, live music performances, music special events; production, distribution, and presentation of radio programs and sound recordings in the fields of entertainment news, music; providing ongoing radio and audio programs in the fields of entertainment news, music; providing radio, internet, and satellite music programming by means of telecommunications networks, computer networks, the internet, satellite, radio, and wireless communications networks; provision of live entertainment, namely, musical performances; providing websites featuring information in the field of music; entertainment services, namely, providing on-line music reviews,” in International Class 41, “earphones; audio cables; battery chargers, charging cables, and power adaptors for use with earphones; carrying cases for earphones, “in International Class 9, “headphones,” in International Class 9.

The goods and/or 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/or 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).

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.

To provide further support for the above-referenced contentions, the trademark examining attorney submits that it is well-established that companies that provide audio and related products, provide a variety of such products and also often provide related telecommunication and information services.  Please evidence representative examples of such companies and U.S. registrations regarding same (please also see attached evidence):

1. Evidence from Dolby, http://www.dolby.com/us/en/index.html, http://www.dolby.com/us/en/professional/streaming/industry.html, and http://www.dolby.com/us/en/brands/dolby-audio.html;
2. Evidence from Sonos, http://www.sonos.com/en-us/business and http://www.sonos.com/en-us/search?q=play%203;
3. Evidence from Sony, http://www.sony.com/electronics/audio and http://pro.sony/ue_US/solutions/broadcast-production; and
4. U.S. Reg. Nos. 5709918, 5601700, 5469992, 4802048 and 4578384.

Therefore, applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.

Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused under Section 2(d) of the Trademark Act. 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

PRIOR-FILED APPLICATION(S)

The effective filing dates of pending U.S. Application Serial Nos. 86257475, 86291191, 86386047, 86819428, 86819445, 86819468, 88238211, 88370153 and 88409039 precede applicant’s filing date.  See attached referenced applications.  If 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 between the respective marks.  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 conflicts 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.

TRADEMARK COUNSEL – Advisory

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.

RESPONSE GUIDELINES

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  

/Erin Z. Dyer/

Erin Zaskoda Dyer

Trademark Examining Attorney

Law Office 103

(571) 272-9740

erin.zaskoda@uspto.gov (preferred)

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 August 22, 2019 for

U.S. Trademark Application Serial No. 88454319

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. 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Trademark Examining Attorney

Law Office 103

(571) 272-9740

erin.zaskoda@uspto.gov (preferred)

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 August 22, 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.”