To: | Viacom 18 Media Private Limited (NYC-Trademark@dwt.com) |
Subject: | U.S. Trademark Application Serial No. 88481812 - COLORS - 90476-1 |
Sent: | October 31, 2019 04:36:54 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88481812
Mark: COLORS
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Correspondence Address: 1251 AVENUE OF THE AMERICAS, 21ST FLOOR
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Applicant: Viacom 18 Media Private Limited
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Reference/Docket No. 90476-1
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: October 31, 2019
THIS ACTION SUPERSEDES THE PREVIOUSLY EMAILED ACTION ON 8/29/2019. EVIDENCE SUBMITTED IN THE PREVIOUS ACTION IS INCORPORATED HEREIN BY REFERENCE.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION
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 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
Applicant’s mark is COLORS and design. The cited mark is COLORES! (which translates to COLORS).
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 highly similar to the cited mark in sound and commercial meaning because the dominant literal elements of the both marks are the same, COLORS/COLORES. The design element in applicant’s mark does not obviate the refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In this case, consumers will recall and ask for the related services using the term COLORS and believe the services come from the same source.
Relatedness of the Goods and Services
Applicant’s goods and services are:
downloadable software for accessing, searching, viewing, sharing, and commenting on audio, visual, and audiovisual content; downloadable computer game software; audio and visual recordings featuring comedy, drama, music, family entertainment, children's entertainment, animation and variety; audio, video and multimedia broadcasting; television broadcasting and transmission; cable and satellite television broadcasting and transmission; streaming of audio, video, and audiovisual material on the Internet; webcasting services; electronic transmission and delivery of data, audio, video, and images; and,
entertainment services, namely, ongoing multimedia programs in the fields of comedy, drama, music, family entertainment, children's entertainment, animation and variety distributed via various platforms across multiple forms of transmission media; entertainment services in the nature of ongoing television programs in the fields of comedy, drama, music, family entertainment, children's entertainment, animation and variety; presentation of films; digital video, audio, and multimedia publishing services; providing on-line non-downloadable videos in the fields of comedy, drama, music, family entertainment, children's entertainment, animation and variety; on-line journals, namely, blogs featuring entertainment; providing a website featuring entertainment information, and non-downloadable photos and videos featuring comedy, drama, music, family entertainment, children's entertainment, animation and variety; entertainment services, namely, conducting contests; presentation of live show performances; presentation of musical performances; organizing cultural and arts events; conducting entertainment exhibitions in the nature of film festivals and award shows.
Registrant’s services are “education and entertainment services; namely, a television program concerning the people and lifestyle of New Mexico and the Southwest.
In this case, the application uses broad wording to describe its goods and services. As identified, applicant’s downloadable software for transmitting audiovisual and visual content, transmission streaming, broadcasting and webcasting services, ongoing multimedia programs, ongoing television programs, presentation of films, digital video, audio, and multimedia publishing services, on-line non-downloadable videos, blogs, website featuring entertainment information and non-downloadable videos could concern the people and lifestyle of New Mexico and the Southwest.
Additionally, the goods and 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.
Conclusion
Since the marks are very similar and the goods and services are closely related, there is a likelihood of confusion. Accordingly, registration is refused under Trademark Act Section 2(d).
SECTION 2(D) ADVISORY - PRIOR-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.
ATTORNEY BAR INFORMATION
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
Attorney statement required. Applicant’s attorney must provide the following statement: “I am an attorney who is an active member in good standing of the bar 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.
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
/Michele-Lynn Swain/
Examining Attorney
Law Office 116
571-272-9232
michele.swain@uspto.gov
RESPONSE GUIDANCE