Reconsideration Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

Issue date:  March 09, 2020

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

Specifically, applicant first argues that the registered mark is relatively weak because the term “WHO’S NEXT” appears numerous times by third parties in connection with sports related services. To support this argument, applicant provided evidence from newspaper articles, social media articles and respective websites, totaling twelve sources. In regards to this evidence against the refusal, the webpages from Facebook®, We All Got Next and PGA Northern Texas Section do not specify the date it was downloaded or accessed and the complete URL.  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; see TMEP §710.01(b).  Accordingly, these webpages will not be considered.

Nevertheless, it is important to note that even if this evidence was considered, the webpages from Facebook® do not discuss the sporting related services, one webpage is from the same entity noted in applicant’s newspaper sources and one entity does not utilize wording “WHO’S NEXT.”

Thus, applicant has submitted only eight pieces of evidence from newspapers containing the wording “WHO’S NEXT” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These entities appear to be for services similar to those identified in applicant’s application, except for the entity “WHO GOT NEXT” which utilizes this term in connection with a WWE videogame. 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).

However, evidence comprising only a small number of entities using similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  These few pieces of evidence are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018).  Thus, the few similar third-party entities which utilize the term “WHO’S NEXT” submitted by applicant are insufficient to establish that the wording “WHO’S NEXT” is weak or diluted.  Therefore, applicant’s argument is unpersuasive.

Next, applicant argues that the services of the cited registration and the instant application are sufficiently different because applicant has amended the description of services to remove broad wording leaving “the more specific services of producing and providing videos, images and articles on specific high school athletes.”

However, the previously attached Internet evidence from Hoop Group and additional evidence currently attached from Father Ryan High School, De La Salle High School, St. Anthony’s, Flintridge Sacred Heart, Polytechnic School, Mercy High School and Saint Ignatius Wildcats establishes that the same entity commonly provides the relevant services and markets the services under the same mark.  Thus, applicant’s and registrant’s 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).

Furthermore, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a). Thus, applicant’s argument is found unpersuasive.

Accordingly, the following refusal made final in the Office action dated October 28, 2019 is maintained and continued: 

            • Section 2(d) Refusal – Likelihood of Confusion

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

In addition, the following requirement(s) and/or refusal(s) made final in that Office action is satisfied: 

            • Identification of Services

See TMEP §§715.03(a)(ii)(B), 715.04(a).

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

/Udeme U. Attang/

Udeme U. Attang

Examining Attorney

Law Office 115

571-272-9286

udeme.attang@uspto.gov

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on March 09, 2020 for

U.S. Trademark Application Serial No. 88483723

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. 

/Udeme U. Attang/

Udeme U. Attang

Examining Attorney

Law Office 115

571-272-9286

udeme.attang@uspto.gov

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 March 09, 2020, 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.”