To: | Long Haul Productions, Inc. (cisakson@bgs.com) |
Subject: | U.S. Trademark Application Serial No. 88454773 - KING OF THE ROAD - N/A |
Sent: | August 26, 2019 09:39:48 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88454773
Mark: KING OF THE ROAD
|
|
Correspondence Address: 200 COON RAPIDS BOULEVARD, SUITE 400
|
|
Applicant: Long Haul Productions, Inc.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 26, 2019
Summary of Issues:
Section 2(d) Refusal- Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5004617. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is KING OF THE ROAD for “Development and production of documentaries focused on the lives of America's truckers including features on trucks and trailers and behind-the-scenes style reporting; Production of documentary style television programs and social media segments; Production of television programs focused on trucking; Operation of a website that provides access to the trucking related documentaries and storytelling; Documentaries about the making of a reality style television shows focused on truck drivers” in International Class 041.
Registrant’s mark is KING OF THE ROAD for “Entertainment services in the nature of ongoing reality and documentary based television programs about skateboarding distributed via various platforms across multiple forms of transmission media; entertainment, namely, production of television shows about extreme sports and skateboarding; entertainment services in the nature of ongoing television and multimedia program series featuring subjects of general human interest, namely, extreme sports, including skateboarding, distributed via various platforms across multiple forms of transmission media, including reality programs and documentaries about skateboarding; providing entertainment information in the field of extreme sports, including skateboarding, to others via a global computer network; entertainment services, namely, providing a website featuring general entertainment provided through audio and/or video clips, and audio and/or video segments from television, reality programming, documentaries, general entertainment, and culture, on topics of general interest, namely, extreme sports, including skateboarding, to be distributed via a global computer network, portable and wireless networks and various platforms across multiple forms of transmission media; production, publication, and distribution of television programs, as well as ongoing audio-visual series, webisodes, and webcasts featuring extreme sports, including skateboarding, and online content, namely, blogs, non-downloadable articles, reality programs, documentaries, new media content, and videos in the field of extreme sports, including skateboarding; non-downloadable audio-visual programs television shows, webisodes, webcasts, audio-visual series, audio/video clips, and segments, and webcasts in the nature of television, reality programming, and documentaries, in the fields of general entertainment, culture, and topics of general interest, namely, extreme sports, including skateboarding, that may be distributed via a global computer network, portable and wireless networks, and various platforms across multiple forms of transmission media” in International Class 041.
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.
In the present case, applicant’s mark is KING OF THE ROAD and registrant’s mark is KING OF THE ROAD. 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.
Comparison of the Services
Applicant’s services are “Development and production of documentaries focused on the lives of America's truckers including features on trucks and trailers and behind-the-scenes style reporting; Production of documentary style television programs and social media segments; Production of television programs focused on trucking; Operation of a website that provides access to the trucking related documentaries and storytelling; Documentaries about the making of a reality style television shows focused on truck drivers” in International Class 041.
Registrant’s services are “Entertainment services in the nature of ongoing reality and documentary based television programs about skateboarding distributed via various platforms across multiple forms of transmission media; entertainment, namely, production of television shows about extreme sports and skateboarding; entertainment services in the nature of ongoing television and multimedia program series featuring subjects of general human interest, namely, extreme sports, including skateboarding, distributed via various platforms across multiple forms of transmission media, including reality programs and documentaries about skateboarding; providing entertainment information in the field of extreme sports, including skateboarding, to others via a global computer network; entertainment services, namely, providing a website featuring general entertainment provided through audio and/or video clips, and audio and/or video segments from television, reality programming, documentaries, general entertainment, and culture, on topics of general interest, namely, extreme sports, including skateboarding, to be distributed via a global computer network, portable and wireless networks and various platforms across multiple forms of transmission media; production, publication, and distribution of television programs, as well as ongoing audio-visual series, webisodes, and webcasts featuring extreme sports, including skateboarding, and online content, namely, blogs, non-downloadable articles, reality programs, documentaries, new media content, and videos in the field of extreme sports, including skateboarding; non-downloadable audio-visual programs television shows, webisodes, webcasts, audio-visual series, audio/video clips, and segments, and webcasts in the nature of television, reality programming, and documentaries, in the fields of general entertainment, culture, and topics of general interest, namely, extreme sports, including skateboarding, that may be distributed via a global computer network, portable and wireless networks, and various platforms across multiple forms of transmission media” in International Class 041.
In this case, the application use(s) broad wording to describe Production of documentary style television programs and social media segments, which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow production of show topics. 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 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.
For the above reasons the services are considered related for likelihood of confusion analysis.
Therefore, registration is refused on the principal register under Section 2(d) Likelihood of Confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Attorney Bar Information and Attestation
Attorney bar information required. Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
Attorney attestation required. Applicant’s attorney must provide the following statement: “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Attorney bar information required. Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
Attorney attestation required. Applicant’s attorney must provide the following statement: “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
How to respond. Click to file a response to this nonfinal Office action
/Lyndsey Kuykendall Crawford, Esq./
Examining Attorney
Law Office 124
571-272-5995
Lyndsey.Kuykendall@uspto.gov
RESPONSE GUIDANCE