To: | DOSL, LLC (jon@jlaplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88559913 - LIVE LIVE - 00268-DOS |
Sent: | October 18, 2019 11:25:48 AM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88559913
Mark: LIVE LIVE
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Correspondence Address: JONATHAN LA PHILLIPS ATTORNEY AT LAW
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Applicant: DOSL, LLC
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Reference/Docket No. 00268-DOS
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: October 18, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant seeks to register the mark “LIVE LIVE” for “Streaming of video material on the internet; streaming of audio, visual, and audiovisual material via a global computer network; communications services, namely, transmitting streamed sound and audiovisual recordings via the internet” in International Class 038.
The registered mark “LIVE LIVE” for “Cable television broadcasting” in International Class 038.
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
In the present case, applicant’s mark is LIVE LIVE and registrant’s mark is LIVE LIVE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Relevant Services
The applicant identifies “streaming of video material on the internet; streaming of audio, visual, and audiovisual material via a global computer network; communications services, namely, transmitting streamed sound and audiovisual recordings via the internet”, while the owner of the cited registration produces “cable television broadcasting.”
The attached Internet evidence, consisting of website screenshots, establishes that the same entity commonly provides the relevant services and markets the services under the same mark. See attached website screenshots from www.nbc.com, www.spectrum.com, www.fios.com, and www.att.com. All of the previously referenced website screenshots establish that the same entity broadcasts cable television as well as provides streaming of audio and video via the internet.
Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
In total, the two marks create an identical commercial impression and the applicant and registrant’s services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that the services originate from a common source. Therefore, registration must be refused under Section 2(d) of the Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, the applicant has applied for LIVE LIVE for “Streaming of video material on the internet; streaming of audio, visual, and audiovisual material via a global computer network; communications services, namely, transmitting streamed sound and audiovisual recordings via the internet” in International Class 038.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The term LIVE is defined as “At, during, or from the time of actual occurrence or performance: The landing on the moon was telecast live.” See attached American Heritage Dictionary definition. Further, the attached website screenshots from the applciant’s website indicate that the applicant is offering “live streaming on demand.”
A mark comprised of a repeated descriptive term may be merely descriptive where no new or different commercial impression results from the repetition. See In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153 (TTAB 2009) (holding TIRES TIRES TIRES generic for retail tire store services); In re Litehouse, Inc., 82 USPQ2d 1471, 1474-75 (TTAB 2007) (holding CAESAR! CAESAR! merely descriptive for salad dressing); In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716 (TTAB 1992) (holding DJDJ merely descriptive for disc jockey services for parties – “[n]othing new or different is imparted by the simple repetition of the descriptive expression DJ”); TMEP §1209.03(t). As such, the repeated term, LIVE, does not alter the commercial impression or meaning of the descriptive wording.
In this case, LIVE LIVE, immediately describes a characteristic or feature of applicant’s services, i.e., live video streaming or streaming of audio and video at the time of actual occurrence or performance. The repeated term, LIVE, does not alter the descriptive meaning of the mark.
Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1) of the Act.
Advisory: Mark May Be Generic
COMMENTS
Applicant may 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.
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.
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
/Andrew T. Clark/
Trademark Examining Attorney
Law Office 107
600 Dulany Ave.
Alexandria, VA 22316
(571) 270-7304
andrew.clark@uspto.gov
RESPONSE GUIDANCE