To: | Buzzer Inc. (tm@cdas.com) |
Subject: | U.S. Trademark Application Serial No. 88468033 - BUZZER - 4939.1 |
Sent: | September 09, 2019 10:44:53 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88468033
Mark: BUZZER
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Correspondence Address: COWAN DEBAETS ABRAHAMS & SHEPPARD LLP
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Applicant: Buzzer Inc.
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Reference/Docket No. 4939.1
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 09, 2019
OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:
The following are the open application issues that the applicant must address in order to have a complete response to this Office action:
-Refusal to Register Under Trademark Act Section 2(d) –Likelihood of Confusion Exists
-Requirement for Clarification of Identification Language
SEARCH & Potential Suspension Advisory –Earlier-Filed Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. 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. The applicant should note the following additional grounds for refusal.
REFUSAL to Register Under Trademark Act Section 2(d) –Likelihood of Confusion Exists
The mark for cited Registration Number 2095100 is the wording AT THE BUZZER in standard characters for: “Newsletter relating to professional basketball” in International Class 016. The owner of record for Registration Number 2095100 is listed as “Athlon Sports Communications, Inc.”
The mark for cited Registration Number 5134173 is the wording BUZZR in standard characters for: “Downloadable electronic game programs for computers and wireless devices featuring content exclusively relating to game shows” in International Class 009.
The mark for cited Registration Number 5734132 is the wording BUZZR in standard characters for: “Entertainment services, namely, creation, development, production and distribution of audio and video content and programming for television, radio and internet media; entertainment services, namely, providing a website featuring a large variety of educational and informational topics on the topic of game shows; entertainment services, namely, providing on-line journals and blogs featuring information and stories in the field of game shows; providing on-line entertainment programs and information, namely, non-downloadable videos, non-downloadable web series, non-downloadable television series and non-downloadable continuing programs in the field of game shows delivered via wireless communications, wired communications, and global communications networks” in International Class 041.
The owner of record for Registration Numbers 5134173 & 5734132 is listed as “FremantleMedia North America, Inc.”
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.
COMPARISON OF THE MARKS
Registration Number 2095100 AT THE BUZZER
In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Registration Numbers 5134173 BUZZR & 5734132 BUZZR
All of the marks at issue use the wording BUZZER /BUZZR. The marks are phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
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).
The highly similar/identical sound, highly similar appearance and identical commercial meaning are all factors that combine to create a confusingly similar commercial impression that is shared by the marks at issue in this case.
COMPARISON OF THE GOODS & SERVICES
Registration Number 2095100
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).
The applicant lists its services as featuring: “non-downloadable multimedia entertainment content in the field of sports [and] athletic[s]” and in the market for multimedia content, it is common for providers of non-downloadable multimedia sports content to also provide newsletters in the same subject matter fields.
The evidence clearly establishes that the same entity commonly produces and provides the relevant goods and/or services and markets the goods and/or services under the same mark. The evidenc also shows that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. The clear and close relationship shown between the goods and/or services indicates that in this case, the goods and services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and/or services 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).
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.
Registration Number 5134173
In this case, the application uses broad wording to describe its goods as “Downloadable mobile applications for …entertainment games”, which presumably encompasses all goods of the type described, including registrant’s more narrowly listed “Downloadable electronic game programs for computers and wireless devices featuring content exclusively relating to game shows” goods. 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 goods at issue in this case 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 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 are related.
Registration Number 5734132
In this case, the registration uses broad wording to describe its services as: “Entertainment services, namely, creation, development, production and distribution of audio and video content and programming for television, radio and internet media”, which presumably encompasses all services of the type described, including applicant’s more narrowly listed “Entertainment services, namely, providing non-downloadable multimedia entertainment content in the field of sports, athletic, and entertainment games, competitions, and contests provided via a video-on-demand service”. 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 as well. 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.
A likelihood of confusion results when the confusingly similar marks are used in the market for the closely related goods and services. Accordingly, registration of the mark sought in this application is hereby refused under Section 2(d) of the Trademark Act in this case. Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
REQUIREMENT for Clarification of Identification Language
The bolded wording “video streaming services via the Internet, featuring sports, athletic, and entertainment games, competitions, and contests” in the identification of services is indefinite and must be clarified because as to the form of the content being streamed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The wording “Entertainment services, namely, providing non-downloadable multimedia entertainment content in the field of sports, athletic, and entertainment games, competitions, and contests provided via a video-on-demand service” in the identification of services for International Class 041 must be clarified because it is too broad and indefinite as to the form of the content being provided. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The applicant may address the issues raised herein by amending to some or all of the following suggested amended wording, if accurate:
INTERNATIONAL CLASS 009
Downloadable mobile applications for streaming audio, visual and audiovisual material featuring sports, athletic, and entertainment games, competitions, and contest provided via a video-on-demand service.
INTENRATIONAL CLASS 038
Video-on-demand transmission services via the Internet; Video streaming services via the Internet, featuring sports programs, athletic events, and entertainment game shows, sports competition events and programs featuring athletic contests.
INTERNATIONAL CLASS 041
Entertainment services, namely, providing non-downloadable multimedia entertainment content in the nature of ongoing television programs in the field of sports, athletic, and entertainment games, competitions, and contests provided via a video-on-demand service.
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.
ADVISORY –Response Guidelines for TEAS-Plus Applications
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
/Amy Kean/
Trademark Attorney, Law Office 112
Phone: 571-272-8854
Amy.Kean@uspto.gov
RESPONSE GUIDANCE