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:  November 10, 2020

 

 

INTRODUCTION

 

On March 16, 2020, action on this application was suspended pending the disposition of U.S. Application Serial No. 88315334.  The referenced prior-pending application has since registered.  Therefore, registration is refused herein.

 

In addition, this Office action is supplemental to and supersedes the previous Office action issued on September 11, 2019 and suspension letter issued on March 16, 2020 in connection with this application.  The assigned trademark examining attorney is issuing a new domicile address requirement based on a USPTO rule change that became effective on August 3, 2019.  The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue by issuing the suspension letter on March 16, 2020 instead of raising this issue then. 

 

On August 3, 2019, the USPTO revised the federal trademark rules to require an applicant to provide the address of applicant’s domicile.  See the U.S. Counsel Rule change webpage for more information.  Thus, applicant must respond to this new requirement for the application to proceed to registration, in addition to the issues discussed herein.

 

In a previous Office action dated September 11, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: a partial refusal under Trademark Act Section 2(d) for a likelihood of confusion with registered marks in Classes 9, 16, and 41.  In addition, applicant was required to satisfy the following requirement: requirement for a signed application.  Applicant was also informed that a prior filed application may result in an additional Section 2(d) refusal, should the application register.

 

Based on applicant’s response dated March 4, 2020, the following requirement was satisfied: signed application provided.  See TMEP §§713.02, 714.04. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE/CONTINUED & MAINTAINED: Partial Refusal under Section 2(d) – Likelihood of Confusion
• NEW ISSUE: Domicile Address Requirement – Address of Record Unacceptable

 

PARTIAL REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION

 

This partial refusal applies only to the goods and services specified herein.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2892379, 3861823, 5240141, and 6048872.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached and previously attached registrations.

 

The applied-for mark is “THE ARCHER” in standard character form for the following relevant goods and services:

 

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 26: Ornamental cloth patches; cloth patches for clothing; embroidered patches for clothing; ornamental adhesive patches for jackets; fabric appliques; appliques; shoe laces; ornamental buttons

 

Class 41, in relevant part: Entertainment services, namely, providing information relating to entertainment, music and musical entertainment; entertainment services, namely, providing information relating to entertainment, music and musical entertainment via global communications networks; non-downloadable electronic newsletters in the fields of entertainment, music and entertainment; arranging and conducting contests and sweepstakes; arranging and conducting contests and sweepstakes services provided via global communications networks

 

The cited mark in U.S. Registration No. 2892379 is “ARCHER RECORDS” in stylized form, with “RECORDS” disclaimed for:

 

Class 41: Production of audio recordings; music publishing services

 

The cited mark in U.S. Registration No. 3861823 is “ARCHER” in standard character form 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 cited mark in U.S. Registration No. 5240141 is “ARCHER” in standard character form for:

 

Class 16: Writing instruments

 

The cited mark in U.S. Registration No. 6048872 is “ARCHERS” in standard character form for:

 

Class 25: Clothing intended to create an association with a professional lacrosse team, namely, shirts, pants, sweatshirts, shorts, tops, bottoms, jackets, pajamas, socks, scarves, hats, sweatpants, lacrosse jerseys, athletic uniforms

 

Class 41: Entertainment services, namely, organizing and conducting athletic competitions and games in the field of lacrosse; entertainment services in the nature of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions for the purpose of distribution through broadcast media; the production and distribution of radio and television broadcasts of lacrosse games, lacrosse events and programs in the field of lacrosse; production of television programs in the field of lacrosse matches; conducting and arranging lacrosse clinics, lacrosse camps, and lacrosse events; fan club services; entertainment services, namely, providing a website featuring non-downloadable videos in the field of television highlights, interactive television highlights, radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Ticket reservation and booking services for sporting events

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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.

 

The cited mark in U.S. Registration No. 6048872 is “ARCHERS” 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Applicant’s applied-for mark “THE ARCHER” is sufficiently similar to each registrant’s mark, “ARCHER RECORDS”, “ARCHER”, “ARCHER”, and “ARCHERS” 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, and singular form of the wording, 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”). 

 

In addition, in the case of “ARCHER” compared to “ARCHERS”, an applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

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”, plural or singular form of the wording, 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/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 relevant 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 26: Ornamental cloth patches; cloth patches for clothing; embroidered patches for clothing; ornamental adhesive patches for jackets; fabric appliques; appliques; shoe laces; ornamental buttons

 

Class 41, in relevant part: Entertainment services, namely, providing information relating to entertainment, music and musical entertainment; entertainment services, namely, providing information relating to entertainment, music and musical entertainment via global communications networks; non-downloadable electronic newsletters in the fields of entertainment, music and entertainment; 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

 

The identified goods in U.S. Registration No. 6048872 are for:

 

Class 25: Clothing intended to create an association with a professional lacrosse team, namely, shirts, pants, sweatshirts, shorts, tops, bottoms, jackets, pajamas, socks, scarves, hats, sweatpants, lacrosse jerseys, athletic uniforms

 

Class 41: Entertainment services, namely, organizing and conducting athletic competitions and games in the field of lacrosse; entertainment services in the nature of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions for the purpose of distribution through broadcast media; the production and distribution of radio and television broadcasts of lacrosse games, lacrosse events and programs in the field of lacrosse; production of television programs in the field of lacrosse matches; conducting and arranging lacrosse clinics, lacrosse camps, and lacrosse events; fan club services; entertainment services, namely, providing a website featuring non-downloadable videos in the field of television highlights, interactive television highlights, radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Ticket reservation and booking services for sporting events

 

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).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

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 goods and/or 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 goods and/or services are related.

 

The trademark examining attorney has previously 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 U.S. Registration No. 2892379’s identified goods and services clearly travel in overlapping and related channels of trade, as shown by the previously attached evidence of record.  The sample evidence previously attached 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.  (Previously 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.  (Previously 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.  (Previously attached from http://music.disney.com/, http://disneymusic.disney.com/)

 

In addition, applicant’s and U.S. Registration No. 5240141’s identified goods clearly travel in overlapping and related channels of trade, as shown by the previously attached evidence of record.  The sample evidence previously attached 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.  (Previously attached from http://www.paperchase.com/en_us/.)

-          Papyrus, offering stationery and writing instruments.  (Previously attached from http://www.papyrusonline.com/.)

-          The Goulet Pen Co., offering stationery and writing instruments.  (Previously attached from http://www.gouletpens.com/http://www.penboutique.com/.)

 

Applicant’s and U.S. Registration No. 6048872’s identified goods clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record.  The sample evidence attached from the following sources demonstrates that the same source commonly offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and ornamental cloth patches, cloth patches for clothing, embroidered patches for clothing, ornamental adhesive patches for jackets, fabric appliques, appliques, shoe laces, and/or ornamental buttons of applicant:

 

-          The attached dictionary evidence from Merriam-Webster shows “button” is defined as “a usually circular metal or plastic badge bearing a stamped design or printed slogan.” (Attached from http://www.merriam-webster.com/dictionary/button.)

-          Fans Edge, offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and ornamental cloth patches, cloth patches for clothing, embroidered patches for clothing, shoe laces, and/or ornamental buttons of applicant. (Attached from http://www.fansedge.com/?query=buttons&_ref=p-CLP:m-TYPEAHEAD:i-r-0c-0:po-0, http://www.fansedge.com/?query=patches&_ref=p-SRP:m-SEARCH, http://www.fansedge.com/?query=shoelaces&_ref=p-SRP:m-SEARCH, http://www.fansedge.com/?query=lacross&_ref=p-OLP:m-SEARCH.) 

-          LAX.com, offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and shoe laces of applicant. (Attached from http://www.lax.com/search?q=laces&lang=default, http://www.lax.com/about-sales/.)

-          Neff, offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and ornamental cloth patches, cloth patches for clothing, embroidered patches for clothing, and/or ornamental buttons of applicant. (Attached from http://www.neffco.com/lacrosse-collection.)

-          Team Sportswear, offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and ornamental cloth patches, cloth patches for clothing, and/or embroidered patches for clothing of applicant. (Attached from http://www.logosoftwear.com/custompatches.php, http://www.teamsportswear.com/customlacrossejerseys.)

-          The Graphic Edge, offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and fabric appliques and appliques of applicant. (Attached from http://www.thegraphicedge.com/catalog/view-by-sport/lacrosse-215.)

-          US Lacrosse, offers, produces, manufactures, or sells clothing intended to create an association with a professional lacrosse team of registrant and ornamental cloth patches, cloth patches for clothing, and/or embroidered patches for clothing of applicant. (Attached from http://shop.uslacrosse.org/products/us-lacrosse-officials-patch, http://shop.uslacrosse.org/.)

 

The sample evidence attached from the following sources also demonstrates that the same source commonly offers a website featuring lacrosse news, organizes and conducts lacrosse competitions and games, and/or provides ticket reservation and booking services for sporting events of U.S. Registration No. 6048872, and entertainment information, non-downloadable electronic newsletters in the field of entertainment, and/or arranges and conducts contests or sweepstakes of applicant:

 

-          ESPN, offers a website featuring lacrosse news, organizes and conducts lacrosse competitions and games, and/or provides ticket reservation and booking services for sporting events of U.S. Registration No. 6048872, and entertainment information, non-downloadable electronic newsletters in the field of entertainment, and/or arranges and conducts contests or sweepstakes of applicant. (Attached from http://www.espn.com/lacrosse/.)

-          Inside Lacrosse, offers a website featuring lacrosse news of U.S. Registration No. 6048872, and entertainment information, non-downloadable electronic newsletters in the field of entertainment, and arranges and conducts contests and sweepstakes of applicant. (Attached from http://www.insidelacrosse.com/, http://www.insidelacrosse.com/subscribe, http://www.insidelacrosse.com/contest.)

-          NCAA, offers a website featuring lacrosse news, organizes and conducts lacrosse competitions and games, and provides ticket reservation and booking services for sporting events of U.S. Registration No. 6048872, and entertainment information, non-downloadable electronic newsletters in the field of entertainment, and arranges and conducts contests or sweepstakes of applicant. (Attached from http://www.ncaa.com/sports/lacrosse-men/d1.)

 

The attached and previously 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, and singular form of the wording, 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 below.

 

DOMICILE ADDRESS REQUIREMENT – ADDRESS OF RECORD UNACCEPTABLE

 

Applicant must provide applicant’s domicile address.  All applications must include the applicant’s domicile address, which is required for a complete application.  See 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189. 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box or mail forwarding service instead of a street address.  Please see the attached evidence from The UPS Store showing the address of record is a third party mailbox service, with the last three numbers of the Suite number designating the individual box.  In most cases, a post office box or mail forwarding service is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, applicant must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile.  Examination Guide 4-19, at I.A.3.

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.

 

To provide applicant’s domicile street address.  After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  Information provided in the TEAS response form will be publicly viewable. 

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)        First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)        Use the radio buttons to select “Attorney” for the role of the person submitting the form;

(b)        Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)        On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)        Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)        Answer “yes” to wizard question #3 and click “Continue;”

(b)        Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form. 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about each refusal and/or requirement in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

The trademark examining attorney is raising a new nonfinal examination issue in this Office action; therefore, jurisdiction remains with the trademark examining attorney.  See 37 C.F.R. §2.141(a); TMEP §714.05-.05(a).  Filing an appeal with the Trademark Trial and Appeal Board would be considered premature at this time.  See TMEP §1501.  Applicant must respond to the trademark examining attorney about the issues raised in this Office action. 

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form.  Current TEAS RF applicants will generally need to continue to meet similar application requirements.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7).  And current TEAS Regular applicants must now provide an email address when submitting documents through TEAS, will generally be sent correspondence electronically from the USPTO, and will pay a filing fee of $275 per class (instead of $400) when adding a class.  For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

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

• 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 November 10, 2020 for

U.S. Trademark Application Serial No. 88529996

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 November 10, 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.”