To: | Think Think Go, LLC (drichard@dmrlegalcounsel.com) |
Subject: | U.S. Trademark Application Serial No. 88461881 - SURRENDER - TTG 001 |
Sent: | September 05, 2019 02:05:54 PM |
Sent As: | ecom112@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 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88461881
Mark: SURRENDER
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Correspondence Address:
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Applicant: Think Think Go, LLC
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Reference/Docket No. TTG 001
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.
Issue date: September 05, 2019
1. Likelihood of confusion refusal.
2. Attorney attestation.
3. Attorney bar information.
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. 5760563. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Here, the applicant seeks registration of the mark SURRENDER for its “Educational and entertainment services, namely, an ongoing series featuring subjects of general human interest distributed via various platforms across multiple forms of transmission media, including the Internet and wireless and mobile networks; provision of non-downloadable audiovisual and multimedia works, films, videos, programs, photographs, images, graphics, text, and information featuring subjects of general human interest via video-on-demand and streaming services; providing a website featuring non-downloadable audiovisual and multimedia works, films, videos, programs, photographs, images, graphics, text, and information featuring subjects of general human interest; providing a website for entertainment purposes featuring an ongoing series featuring subjects of general human interest.”
The registrant applies the mark SURRENDER to its “Organization of events for cultural purposes; Organizing events in the field of environmental education for cultural or educational purposes; Organizing events in the field of sustainability education for cultural or educational purposes; Organizing events in the field of ecological awareness education for cultural or educational purposes; Organizing events in the field of self-improvement for cultural or educational purposes; Organizing and hosting of events for cultural purposes; Organizing community festivals featuring primarily ecological awareness and sustainability education and also providing educational discussion in the field of self-improvement, ecological awareness and sustainability education seminars and also providing self-improvement lectures; Organizing cultural and arts events; Organizing, arranging, and conducting environmental education events; Organizing, arranging, and conducting sustainability education events; Organizing, arranging, and conducting ecological awareness education events; Organizing, arranging, and conducting self-improvement events for social entertainment purposes; Providing a web site featuring the ratings, reviews and recommendations of users on events and activities in the field of entertainment and education; Providing an in-person educational discussion forum in the field of self-improvement; Providing an Internet news portal featuring links to news stories and articles in the field of current events; Providing an Internet website portal in the field of entertainment, cultural and sporting events; Providing current event news via a global computer network; Providing information and news in the field of current events relating to environmental education; Providing information and news in the field of current events relating to sustainability education; Providing information and news in the field of current events relating to ecological awareness education; Providing information and news in the field of current events relating to self-improvement; Providing information, news and commentary in the field of current events relating to environmental education; Providing information, news and commentary in the field of current events relating to sustainability education; Providing information, news and commentary in the field of current events relating to ecological awareness education; Providing information, news and commentary in the field of current events relating to self-improvement; Providing information, news, and commentary in the field of current events via the Internet; Providing news in the nature of current event reporting; Providing news in the nature of current event reporting relating to environmental education via the Internet; Providing news in the nature of current event reporting relating to sustainability education via the Internet; Providing news in the nature of current event reporting relating to ecological awareness education via the Internet; Providing news in the nature of current event reporting relating to self-improvement via the Internet.”
Comparison of marks – Marks are identical
In the present case, applicant’s mark is SURRENDER and registrant’s mark is SURRENDER. 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 services
The applicant’s educational and entertainment ongoing series, websites, and multi-media services in the general interest are closely related to the registrant’s events, websites, and information being provided in categories of culture, environment, current events, and other broad categories. The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
In this case, the applicant’s mark is SURRENDER and registrant’s mark is SURRENDER and these marks are identical in appearance, sound, and meaning, and when combined with the fact that the applicant’s educational and entertainment ongoing series, websites, and multi-media services in the general interest are closely related to the registrant’s events, websites, and information being provided in categories of culture, environment, current events, and other broad categories, makes it likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. Accordingly, the mark is refused registration on the Principal Register under Trademark Act Section 2(d), 15 U.S.C. Section 1052.
INFORMALITIES
ATTORNEY ATTESTATION
ATTORNEY BAR INFORMATION
The USPTO applies the following legal authority to a trademark application:
• The Trademark Act of 1946 (15 U.S.C. §§1051 et seq.)
• The Trademark Rules of Practice (37 C.F.R. pts. 2, 3, 6, 7, 11)
• Precedential court and Trademark Trial and Appeal Board (TTAB) decisions
• The Trademark Manual of Examining Procedure (TMEP)
• The Trademark Trial and Appeal Board Manual of Procedure (TBMP)
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
/Warren L. Olandria/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@uspto.gov
RESPONSE GUIDANCE