| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88483769 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88483769/mark.png |
| LITERAL ELEMENT | WHOSNEXTHS |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
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This Communication is in response to the Office Action dated October 28, 2019. In view of the following remarks noted herein, Applicant believes the application is in prima facie condition for passage to publication, allowance and ultimately registration thereof. In the Office Action, the Examining Attorney: refused registration of Applicant’s mark under Trademark Act section 2(d), 15 U.S.C. Section 1052(d), on the grounds that Applicant’s mark, when used in connection with the recited services, so resembles the marks cited in trademark registration no. 4,742,153 for WHOSNEXT as to be likely to cause confusion, to cause mistake or to deceive. The Examining Attorney also objected to the description of the goods as indefinite. In addition to the other reasons set forth herewithin, Applicant respectfully submits that the term “Who’s Next” is a common term used by a number of different entities in the sporting industry such that it is a weak mark so no one entity can claim exclusive rights to use the term apart from its usage. With that in mind, the differences in the marks and their respective services are such that confusion in the marketplace is unlikely.
Applicant’s WHOSNEXTHS mark, when considered in its entirety (including the services offered thereunder) and in view of the large number of entities that use “Who’s next” for sports team, tournaments or sports-related businesses, is not likely to create confusion in the marketplace as to the source of the services. Under In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973), a likelihood of confusion for purposes of Section 2(d) exists only when the purchasing public would be confused, mistaken, or materially deceived with regard to Applicant’s mark. While the DuPont case lists several factors for determining when a likelihood of confusion may exist between the marks, the relevant factors in the present case are the relative weakness of the cited mark and the differences of the services offered thereunder. As described in more detail below, an application of these factors to Applicant’s mark and the cited registration clearly favors a finding of no likelihood of confusion. A. The Cited Mark is Relatively Weak and is Limited to a Narrow Scope of Protection. The use of the term “Who’s Next” by a number of different entities in the sporting industry for the same or similar services as the cited registration demonstrates that Registrant’s mark is relatively weak and only entitled to a narrow scope of protection. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ.2d 1689, 1693 (Fed. Cir. 2005). In particular, because of the use of the term “who’s next” by a number of third parties in the sporting industry, it is respectfully submitted that the public will look to other elements and the services offered thereunder to distinguish the source of the goods or services. TMEP Section 1207.01(d)(iii); see, e.g.,. In re Dayco, 9 U.S.P.Q.2d 1910 (TTAB 1988). In addition to the third party trademark registration for WHO WANTS NEXT for organizing intercollegiate sports events and contests previously discussed, a search of available records found numerous third parties using Who’s Next in connection with sports related services, including two for the identical services set forth in the cited registration, namely sports camps. They also identify at least 27 sports teams, games or tournaments, and 8 other names/marks that relate to sports. A summary of the results of the search are attached hereto. Printouts showing the current or recent use of these marks in connection with these sporting businesses and/or events are attached to demonstrate their current use in the marketplace. In this regard, it is noted that many of usages cover sporting goods and services much closer to the services of the cited registration then the services offered under Applicant’s trademark application and a number are currently used in Texas, the state where the Northern Texas PGA Junior Golf Foundation is located and uses the mark. As a result, the cited registration and other uses of WHO’S NEXT or a variation thereof for sporting goods and/or services are relative weak, wherein consumers will discern the differences in the goods/services offered therein to distinguish the marks. In view of the relative weakness of the cited registration, consumers will look to the differences in the marks to distinguish the sources. In this case, the inclusion of the letters "hs" at the end further distinguishes the mark from the mark in the cited registration. Thus, it is respectfully submitted that confusion is not likely in the marketplace. B. The Services of the Cited Registration and the Pending Application are Sufficiently Different that Confusion is Unlikely to Occur in the Marketplace. In making the current rejection, the Examining Attorney attached copies of webpages from Wikipedia, NCAA, NAIA and NJCAA, and third party registrations in arguing that same entity commonly provides the services from the cited registration (i.e., sports camps) and Applicant’s services under the same mark. For the reasons set forth herein, and in view of the clarification of services offered under Applicant’s mark, it is respectfully submitted that confusion in the marketplace is unlikely. As set forth herein, Applicant has amended the description of goods to remove the broad descriptions of college recruiting services and providing sports information from the present application, leaving the more specific services of producing and providing videos, images and articles on specific high school athletes. This contrasts with sports camps which provide a forum for people (generally children) to go to play and practice sports. As for the webpages that the Examining Attorney attached and referenced in the Office Actions, it is noted that Settles Tennis and Skyhawk webpages only discloses recruiting counseling services and the Pac-8 webpage was for a 2016 camp provided by a college athletic association to allow all of its colleges to specifically recruit. As such, it is clear as to the source of the services being provided by the Pac-8. Even to the extent that some of the owners of these companies offer both sports camps and recruiting services, in addition to the amendment of the description of services further distinguishing the services offered thereunder, it is respectfully noted that the number of sports camps that provide recruiting services is very small, with the vast majority of sports camps being simply camps that allow children to attend and play and practice sports. Thus, this situation is analogous to the situation in In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 U.S.P.Q.2d 1059, 1063 (Fed. Cir. 2003), where it was found to be no likelihood of confusion on the basis that only a small number of restaurants/brew pub offered private label beers and food. II. CONCLUSION Thus, in view of the relative weakness of the cited registration, and the differences in the services in the cited registration and the present application, it is respectfully submitted that consumers are not likely to be confused in the marketplace. Therefore, Applicant respectfully requests that the present rejections be withdrawn to allow the application to proceed to publication. As to the rejection of the specimen for International Class 35, it is noted that International Class 35 has been removed from the trademark application rendering the rejection moot.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_389813198-20200203164335521842_._3198.038_Exhibit_-_Search_Results_WHO_S_NEXT.pdf |
| CONVERTED PDF FILE(S) (22 pages) |
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| \\TICRS\EXPORT18\IMAGEOUT18\884\837\88483769\xml1\ROA0012.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT18\884\837\88483769\xml1\ROA0013.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT18\884\837\88483769\xml1\ROA0014.JPG | |
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| GOODS AND/OR SERVICES SECTION (035)(class deleted) | |
| GOODS AND/OR SERVICES SECTION (041)(current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Providing entertainment and information services, namely, production and distribution of multimedia programs and entertainment content in the nature of videos, images and articles featuring sports high school athletes not including golfers; providing a website featuring information on sports high school athletes not including golfers and college recruiting; providing on-line non-downloadable articles and videos in the field of sports high school athletes not including golfers and college recruiting; providing sports information featuring sports high school athletes not including golfers and college recruiting; college recruiting services for student athletes and coaches over a global computer network; and providing information relating to sports in the field of high school athletes not including golfers and college recruiting through various media outlets, namely, websites and social media channels | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/00/2018 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/00/2018 |
| GOODS AND/OR SERVICES SECTION (041)(proposed) | |
| INTERNATIONAL CLASS | 041 |
| TRACKED TEXT DESCRIPTION | |
| Providing entertainment and information services, namely, production and distribution of multimedia programs and
entertainment content in the nature of videos, images and articles featuring sports high school athletes not including golfers; |
|
| FINAL DESCRIPTION | |
| Providing entertainment and information services, namely, production and distribution of multimedia programs and entertainment content in the nature of videos, images and articles featuring sports high school athletes not including golfers; providing on-line non-downloadable articles and videos in the field of high school athletes not including golfers | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/00/2018 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/00/2018 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Scott W. Smilie/ |
| SIGNATORY'S NAME | Scott W. Smilie |
| SIGNATORY'S POSITION | Attorney of Record, Illinois Bar Member |
| SIGNATORY'S PHONE NUMBER | (312) 551-8300 |
| DATE SIGNED | 02/11/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 11 14:39:55 EST 2020 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 200211143955708506-884837 69-700678ca4b43b3a29d3b8a 916064c2bf4070f8db58bae6e 2d1565ed6245876a8ac-N/A-N /A-20200211143850246368 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
This Communication is in response to the Office Action dated October 28, 2019. In view of the following remarks noted herein, Applicant believes the application is in prima facie condition for passage to publication, allowance and ultimately registration thereof.
In the Office Action, the Examining Attorney: refused registration of Applicant’s mark under Trademark Act section 2(d), 15 U.S.C. Section 1052(d), on the grounds that Applicant’s mark, when used in connection with the recited services, so resembles the marks cited in trademark registration no. 4,742,153 for WHOSNEXT as to be likely to cause confusion, to cause mistake or to deceive. The Examining Attorney also objected to the description of the goods as indefinite. In addition to the other reasons set forth herewithin, Applicant respectfully submits that the term “Who’s Next” is a common term used by a number of different entities in the sporting industry such that it is a weak mark so no one entity can claim exclusive rights to use the term apart from its usage. With that in mind, the differences in the marks and their respective services are such that confusion in the marketplace is unlikely.
APPLICANT’S MARK IS NOT LIKELY TO BE CONFUSED WITH THE CITED REGISTERED MARK.
Applicant’s WHOSNEXTHS mark, when considered in its entirety (including the services offered thereunder) and in view of the large number of entities that use “Who’s next” for sports team, tournaments or sports-related businesses, is not likely to create confusion in the marketplace as to the source of the services. Under In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973), a likelihood of confusion for purposes of Section 2(d) exists only when the purchasing public would be confused, mistaken, or materially deceived with regard to Applicant’s mark. While the DuPont case lists several factors for determining when a likelihood of confusion may exist between the marks, the relevant factors in the present case are the relative weakness of the cited mark and the differences of the services offered thereunder. As described in more detail below, an application of these factors to Applicant’s mark and the cited registration clearly favors a finding of no likelihood of confusion.
A. The Cited Mark is Relatively Weak and is Limited to a Narrow Scope of Protection.
The use of the term “Who’s Next” by a number of different entities in the sporting industry for the same or similar services as the cited registration demonstrates that Registrant’s mark is relatively weak and only entitled to a narrow scope of protection. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ.2d 1689, 1693 (Fed. Cir. 2005). In particular, because of the use of the term “who’s next” by a number of third parties in the sporting industry, it is respectfully submitted that the public will look to other elements and the services offered thereunder to distinguish the source of the goods or services. TMEP Section 1207.01(d)(iii); see, e.g.,. In re Dayco, 9 U.S.P.Q.2d 1910 (TTAB 1988).
In addition to the third party trademark registration for WHO WANTS NEXT for organizing intercollegiate sports events and contests previously discussed, a search of available records found numerous third parties using Who’s Next in connection with sports related services, including two for the identical services set forth in the cited registration, namely sports camps. They also identify at least 27 sports teams, games or tournaments, and 8 other names/marks that relate to sports.
A summary of the results of the search are attached hereto. Printouts showing the current or recent use of these marks in connection with these sporting businesses and/or events are attached to demonstrate their current use in the marketplace. In this regard, it is noted that many of usages cover sporting goods and services much closer to the services of the cited registration then the services offered under Applicant’s trademark application and a number are currently used in Texas, the state where the Northern Texas PGA Junior Golf Foundation is located and uses the mark. As a result, the cited registration and other uses of WHO’S NEXT or a variation thereof for sporting goods and/or services are relative weak, wherein consumers will discern the differences in the goods/services offered therein to distinguish the marks.
In view of the relative weakness of the cited registration, consumers will look to the differences in the marks to distinguish the sources. In this case, the inclusion of the letters "hs" at the end further distinguishes the mark from the mark in the cited registration. Thus, it is respectfully submitted that confusion is not likely in the marketplace.
B. The Services of the Cited Registration and the Pending Application are Sufficiently Different that Confusion is Unlikely to Occur in the Marketplace.
In making the current rejection, the Examining Attorney attached copies of webpages from Wikipedia, NCAA, NAIA and NJCAA, and third party registrations in arguing that same entity commonly provides the services from the cited registration (i.e., sports camps) and Applicant’s services under the same mark. For the reasons set forth herein, and in view of the clarification of services offered under Applicant’s mark, it is respectfully submitted that confusion in the marketplace is unlikely.
As set forth herein, Applicant has amended the description of goods to remove the broad descriptions of college recruiting services and providing sports information from the present application, leaving the more specific services of producing and providing videos, images and articles on specific high school athletes.
This contrasts with sports camps which provide a forum for people (generally children) to go to play and practice sports. As for the webpages that the Examining Attorney attached and referenced in the Office Actions, it is noted that Settles Tennis and Skyhawk webpages only discloses recruiting counseling services and the Pac-8 webpage was for a 2016 camp provided by a college athletic association to allow all of its colleges to specifically recruit. As such, it is clear as to the source of the services being provided by the Pac-8. Even to the extent that some of the owners of these companies offer both sports camps and recruiting services, in addition to the amendment of the description of services further distinguishing the services offered thereunder, it is respectfully noted that the number of sports camps that provide recruiting services is very small, with the vast majority of sports camps being simply camps that allow children to attend and play and practice sports. Thus, this situation is analogous to the situation in In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 U.S.P.Q.2d 1059, 1063 (Fed. Cir. 2003), where it was found to be no likelihood of confusion on the basis that only a small number of restaurants/brew pub offered private label beers and food.
II. CONCLUSION
Thus, in view of the relative weakness of the cited registration, and the differences in the services in the cited registration and the present application, it is respectfully submitted that consumers are not likely to be confused in the marketplace. Therefore, Applicant respectfully requests that the present rejections be withdrawn to allow the application to proceed to publication.
As to the rejection of the specimen for International Class 35, it is noted that International Class 35 has been removed from the trademark application rendering the rejection moot.
