Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

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 15, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues:

 

• Prior-Filed Pending Applications
• Section 2(d) Refusal – Likelihood of Confusion

 

Prior-Filed Pending Applications

 

The filing date of pending U.S. Application Serial No. 88393771 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4459340, 5127560, and 3382218.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

Applicant has applied for the mark “THE ART OF SOUND” for the goods “Printed publications, namely, pamphlets, brochures, booklets, leaflets, and newsletters in the fields of home, business and entertainment automation systems.”

 

A.     Registration No. 5127560

Registrant has registered the mark “ART+SOUND” in standard characters for the goods “Wireless headphones; wireless headsets for cellular or mobile phones; wireless indoor and outdoor speakers; wireless speakerphones; wireless home audio speakers; wireless computer audio speakers; audio speakers for televisions; audio systems, namely, stereo receivers, stereo signal processors, amplifiers, and speakers; mobile phone and tablet computer accessories, namely, protective cases, electronic docking stations, stands adapted for mobile phones and tablet computers, audio speakers, headphones, battery chargers, electric cables, screen protectors comprised of plastic, acrylic and glass adapted for use with portable electronic devices, excluding gaming apparatus, stylus for computers, tablet computers and mobile phones, battery packs, lenses for cameras incorporated in mobile electronic devices, and protective skins in the nature of fitted plastic skins for covering and protecting mobile phones and tablet computers; DJ audio speakers, DJ equipment, namely, turntables being record players, audio recorders, audio amplifiers, microphones and audio speakers; novelty speakers; home theater systems comprising remotes controls, DVD players, audio amplifiers audio speakers, soundbar speakers and video projectors; sound systems comprising remote controls, amplifiers, audio speakers, and components therefor; waterproof and splash proof audio speakers; microphones; audio recorders; tower audio speakers; tailgate audio speakers; turntables being record players; electronic receivers that communicate with cell phones, mobile phones, headphones, internet and computers; jukeboxes; retro home audio systems comprising turntables being record players, amplifiers and speakers.”

 

(1)   Similarity of the Marks

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).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Although there is no mechanical test to determine the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if suggestive, rather than a generic or descriptive term as the source-identifying feature of the mark.  Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)).

 

Additionally, when comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).

 

In this case, the applied-for and registered marks share two common terms “ART” and “SOUND” used in similar locations within the mark. The use of these terms shows that the marks are similar in sound and appearance, and their similar locations within the mark along with the fact that there is no other distinctive wording or material in the mark shows that the marks also share a similar meaning and commercial impression. Finally, the use of the word “THE” at the beginning of the applied-for mark does not diminish the similarity of between the marks.

 

Therefore, the marks are similar.

 

(2)   Relatedness of the Goods

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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 attached Internet evidence, consisting of screenshots from the webpages of Crutchfield, Theatron, PCMag, and Smarthome, establishes that the same entity commonly provides registrant’s goods and applicant’s publications that are associated with registrant’s goods and markets the goods under the same mark, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are complementary in terms of purpose or function. Specifically, consumers encountering applicant’s publications in the marketplace, the subject matter of which concerns the registrant’s goods as shown by the specimen of record, will likely associate those publications with the goods themselves because of their related subject matter.

 

Thus, applicant’s and registrant’s goods 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).

 

(3) Conclusion

 

Because the marks share two common distinctive terms giving them a similar sound, appearance, and commercial impression, and because the goods are commonly provided by the same entities, travel through the same trade channels, and are complementary in terms of purpose and function, registration is refused for a likelihood of confusion between the marks.

 

B.     Registration No. 4459340

Registrant has registered the mark “THE SOUND OF ART” for the goods “Amplifiers; Audio speakers; High definition multimedia interface cables; Media players.”

 

(1)   Similarity of the Marks

 

Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).

 

In this case, the applied-for mark “THE ART OF SOUND” is merely the reverse combination of the mark “THE SOUND OF ART.” When compared, these marks convey a similar meaning and commercial impression. Specifically, each mark conveys to consumers that the applicant’s and registrant’s goods represent high quality sound, akin to a work of art.

 

Therefore, the marks are similar.

 

(2)   Relatedness of the Goods

 

The above evidence from Crutchfield, Theatron, PCMag, and Smarthome, establishes that the same entity commonly provides registrant’s goods and applicant’s publications that are associated with registrant’s goods and markets the goods under the same mark, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are complementary in terms of purpose or function.

 

Therefore, the goods are related.

 

(3)   Conclusion

 

Because the applied-for and registered marks are merely reverse combination of each other with the same meaning, and because the goods are commonly provided by the same entities, travel through he same trade channels, and are complementary in terms of purpose or function, registration is refused for a likelihood of confusion between the marks.

 

C.     Registration No. 3382218

Registrant has registered the mark “TECHNOLOGY AND ART OF SOUND MANUFACTURED BY ELETTROMEDIA ITALY” with a corresponding design for the goods “Amplifiers; amplifiers for wireless communications; audio amplifiers; audio cassette decks for automobiles; audio cassette recorders; audio mixers; audio speakers; audio tape recorders; loudspeakers; cable connectors; cable modems; cable jump leads; cable television converters; microphone cables; electric cords; electrical cables; car navigation computers; global positioning systems (GPS) consisting of computers, computer software, transmitters, receivers and network interface devices, navigation apparatus for vehicles in the nature of on-board computers; satellite navigational systems, namely, global positioning systems (GPS); CD drives for computers; CD players; CD storage racks; computer monitors; computer monitor frames; microphones; digital audio tape players; digital audio tape recorders; digital audio players; digital video disc drives; digital video recorders; DVD machines; electric audio playback units with lights and speakers; radios for vehicles; radios; stereo amplifiers; stereo receivers; stereo tuners; sub-woofers; television sets; liquid crystal displays; liquid crystal display (LCD) projectors; video monitors; video screens; videotape recorders.”

 

(1)   Similarity of the Marks

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). 

 

In the present case, the marks are identical in part, as they share the common phrase “ART OF SOUND.” The registered mark fully incorporates the applied-for mark and contains the same distinctive wording. When compared in relation to the applicant’s and registrant’s goods, these marks have the same commercial impression, specifically that the applicant’s and registrant’s goods represent a high quality level of sound akin to a work of art.

 

Regarding the design component of the registered mark, 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 goods and/or 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)).

 

Therefore, the marks are similar.

 

(2)   Relatedness of the Goods

The above evidence from Crutchfield, Theatron, PCMag, and Smarthome, establishes that the same entity commonly provides registrant’s goods and applicant’s publications that are associated with registrant’s goods and markets the goods under the same mark, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are complementary in terms of purpose or function.

 

(3)   Conclusion

 

Because the applied-for and registered marks are identical in part and the registered mark fully encompasses the applied-for mark, and because the goods are commonly provided by the same entities, travel through he same trade channels, and are complementary in terms of purpose or function, registration is refused for a likelihood of confusion between the marks.

 

D.    Conclusion

For the reasons above, registration is refused for a likelihood of confusion with the aforementioned marks.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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  

 

 

/Joseph Greene/

Joe Greene

Trademark Examining Attorney

U.S. Patent and Trademark Office, Law Office 125 (571)272-5763

joseph.greene@uspt

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 15, 2019 for

U.S. Trademark Application Serial No. 88514333

 

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. 

 

 

/Joseph Greene/

Joe Greene

Trademark Examining Attorney

U.S. Patent and Trademark Office, Law Office 125 (571)272-5763

joseph.greene@uspt

 

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 October 15, 2019, 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.”