United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88529996
Mark: THE ARCHER
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Correspondence Address:
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Applicant: TAS Rights Management, LLC
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Reference/Docket No. 124909
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 11, 2019
Summary of Issues that Applicant Must Address:
PRIOR-FILED APPLICATION ADVISORY
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.
PARTIAL REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION – CLASSES 9, 16, AND 41
This partial refusal applies to Classes 9, 16, and 41 only.
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.
Similarity of the Marks
The applied-for mark is “THE ARCHER” in standard character form.
The cited mark in U.S. Registration No. 2892379 is “ARCHER RECORDS” in stylized form, with “RECORDS” disclaimed.
The cited mark in U.S. Registration No. 3861823 is “ARCHER” in standard character form.
The cited mark in U.S. Registration No. 5240141 is “ARCHER” in standard character form.
Applicant’s mark is similar in overall commercial impression to each registrant’s mark under Section 2(d) of the Trademark Act. 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 applied-for mark “THE ARCHER” is sufficiently similar to each registrant’s mark, “ARCHER RECORDS”, “ARCHER”, and “ARCHER”, to find a likelihood of confusion because the only difference in applicant’s mark is the addition of the word “THE”, and in the case of the “ARCHER RECORDS” mark, the removal of stylistic matter and descriptive matter, which does not obviate their similarity. 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”).
The word “ARCHER” is the dominant portion of the registered mark “ARCHER RECORDS” because “RECORDS” is disclaimed as descriptive or generic of the identified services. Accordingly, the removal of “RECORDS” from the applied-for mark does not significantly distinguish the registered mark “ARCHER RECORDS” from the applied-for mark “THE ARCHER”. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Finally, registrant’s stylistic and design elements do not detract from the dominant wording shared by the registered and applied-for marks. 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)).
As such, considered in their entireties, applicant’s and each registrant’s marks share a common dominant word and evoke a highly similar overall commercial impression which substantially outweighs the differences in additional descriptive matter, the addition of “THE”, or differences in stylistic elements. Therefore, the marks are confusingly similar under Section 2(d) of the Trademark Act.
Relatedness of the Goods and Services
Applicant’s goods and services are closely related to each registrant’s goods and/or services under Section 2(d) of the Trademark Act. The goods and 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 relevant classes of identified goods and services in the applied-for mark are for:
Class 9: Musical sound recordings; series of musical sound recordings; audio recordings featuring music and musical entertainment; downloadable audio recordings featuring music and musical entertainment; downloadable musical sound recordings; digital music downloadable from the Internet; downloadable music files; digital media, namely, downloadable audio files featuring music and musical entertainment; digital media, namely, downloadable multi-media files featuring music and musical entertainment; downloadable multi-media content containing images, graphics, artwork, text, hypertext, and audio featuring music and musical entertainment; musical video recordings; series of musical video recordings; video recordings featuring music and musical entertainment; video recordings featuring entertainment in the nature of stage performances by a musical artist and entertainer; downloadable video recordings featuring music and musical entertainment; downloadable musical video recordings; digital media, namely, downloadable video files featuring music and musical entertainment; downloadable ring tones for mobile telephones
Class 16: Stickers; stationery
Class 41: Entertainment services in the nature of live musical performances; live music concerts; live stage performances in the nature of musical and theatrical productions; public appearances by a musical artist and entertainer, for entertainment purposes; interviews with a musical artist and entertainer, for entertainment purposes; entertainment services, namely, providing information relating to entertainment, music and musical entertainment; entertainment services, namely, providing information relating to a musical artist and entertainer; entertainment services, namely, providing information relating to entertainment, music and musical entertainment via global communications networks; entertainment services, namely, providing information relating to a musical artist and entertainer via global communications networks; providing online non-downloadable music; providing online non-downloadable music videos; providing online non-downloadable videos featuring pre-recorded musical performances; providing online non-downloadable videos featuring stage performances by a musical artist and entertainer; providing online non-downloadable videos featuring public appearances by a musical artist and entertainer; providing online non-downloadable videos featuring interviews with a musical artist and entertainer; providing online non-downloadable electronic multi-media content featuring pre-recorded musical performances, stage performances, public appearances, interviews, news, photographs, and other information and multi-media materials relating to music and musical entertainment; providing online non-downloadable electronic multi-media content featuring pre-recorded musical performances, stage performances, public appearances, interviews, news, photographs, and other information and multi-media materials relating to a musical artist and entertainer; non-downloadable electronic newsletters in the fields of entertainment, music and entertainment; non-downloadable electronic newsletters relating to a musical artist and entertainer; arranging and conducting contests and sweepstakes; arranging and conducting contests and sweepstakes services provided via global communications networks
The identified services in U.S. Registration No. 2892379 are for:
Class 41: Production of audio recordings; music publishing services
The identified services in U.S. Registration No. 3861823 are for:
Class 41: Entertainment services in the nature of an animated television series featuring comedy; providing on-line information in the field of television and video entertainment featuring comedy via a global communications network; entertainment services in the nature of providing audio visual entertainment in the nature of continuing television shows featuring comedy delivered by the Internet and wireless communication devices
The identified goods in U.S. Registration No. 5240141 are for:
Class 16: Writing instruments
In this case, the application uses broad wording to describe providing information relating to entertainment, which presumably encompasses all services of the type described, including U.S. Registration No. 3861823’s more narrowly worded providing on-line information in the field of television and video entertainment featuring comedy via a global communications network. 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 U.S. Registration No. 3861823’s services 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 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 U.S. Registration No. 3861823’S services are related.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrants in this case. This evidence shows that the goods and services listed therein are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). Specifically, as it relates to U.S. Registration No. 5240141 compared to the application, the representative sample of third party marks show writing instruments and stationery are related. As it relates to U.S. Registration No. 2892379 compared to the application, the representative sample of third party marks show music publishing services and production of audio recordings, and recorded or downloadable music goods, are related to live musical performances, among other Class 9 and Class 41 goods and services listed in the application.
Here, applicant’s and in U.S. Registration No. 2892379’s identified goods and services clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record. The sample evidence attached herein from the following sources demonstrates that the same source commonly offers music publishing services, and production of audio recordings, as well as the complementary offerings of selling and producing recorded or downloadable music goods, and providing live musical performance services:
- Chamber Music Society of Lincoln Center (CMS), offering music publishing services, production of audio recordings, and live musical performance services. The attached screenshots also show CMS sells recorded music. (Attached from http://www.lincolncenter.org/organization/chamber-music-society-of-lincoln-center and http://www.chambermusicsociety.org/.)
- Demo My Song, offering music publishing services, production of audio recordings, and live musical performance services. The attached screenshots also show Demo My Song produces and sells recorded music. (Attached from http://demomysong.com/.)
- Disney, offering music publishing services, production of audio recordings, and live musical performance services. The attached screenshots also show Disney produces and sells recorded music. (Attached from http://music.disney.com/, http://disneymusic.disney.com/)
In addition, applicant’s and in U.S. Registration No. 5240141’s identified goods clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record. The sample evidence attached herein from the following sources demonstrates that the same source commonly offers, produces, manufactures, or sells stationery and writing instruments:
- Paperchase, offering stationery and writing instruments. (Attached from http://www.paperchase.com/en_us/.)
- Papyrus, offering stationery and writing instruments. (Attached from http://www.papyrusonline.com/.)
- The Goulet Pen Co., offering stationery and writing instruments. (Attached from http://www.gouletpens.com/http://www.penboutique.com/.)
The attached Internet evidence above establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark, 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, and the goods and/or services are similar or complementary in terms of purpose or function. Thus, applicant’s and each 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).
Based on the analysis above, applicant’s goods and services are closely related to each registrant’s goods and/or services.
Section 2(d) Refusal Summary
In total, the parties’ marks are confusingly similar in overall commercial impression because the only difference in applicant’s mark is the addition of the word “THE”, and in the case of the “ARCHER RECORDS” mark, the removal of stylistic matter and descriptive matter, which does not obviate their similarity. Applicant’s and each registrant’s goods and services are commercially related and are available in the same trade channels because no party has restricted its channels of trade and as shown by the evidence. Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods and services. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth
REQUIREMENT: UNSIGNED APPLICATION
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
ADVISORY ON ELECTRONIC SIGNATURES
(1) Electronic typed signature. In the TEAS signature block, the signer personally types any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/). And if the filer is not the actual signer of the form, the filer may email the completed unsigned form from within TEAS to the signer to personally type his or her e-signature, after which the form will be automatically returned to the filer for submission.
(2) Pen-and-ink traditional handwritten signature. The filer prints out the completed form in text format and mails or faxes it to the signer who reviews and personally signs and dates it in the usual pen-and-ink manner. The signature and date portion, together with the wording of a declaration under 37 C.F.R. §2.20, if required, is then scanned by the filer as a jpg or pdf image file and attached to the form for submission.
See 37 C.F.R. §2.193(a); TMEP §§611.01(c), 804.03.
In addition, the name of the signer must be clearly printed or typed near the signature. 37 C.F.R. §2.193(d); TMEP §611.01(c). The signer’s particular title or position should also be specified. See TMEP §804.04.
ADVISORY ON WHO CAN SIGN DECLARATIONS
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
/D. Zarick/
D. Zarick
Trademark Examining Attorney
Law Office 126
(571) 270-5013
diana.zarick@uspto.gov
RESPONSE GUIDANCE