United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88594494
Mark: LIONEL RICHIE
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Correspondence Address:
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Applicant: RichLion Holdings, LLC
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Reference/Docket No. 19458.00001
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: November 15, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL-IN-PART AS TO SPECIFIED SERVICES
In this case, applicant has applied to register the mark “LIONEL RICHIE” for use in connection with, in pertinent part, “providing a web site that features information on music, entertainment, television, film, games, and the arts; entertainment services, namely, providing an on-line computer game; providing a computer game that may be accessed network-wide by network users” among other services.
The mark in Registration No. 5036176 is “LIONEL” used in connection with “computer games software.”
Introduction to Section 2(d) Analysis
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 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 andr 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
Here, applicant’s mark, “LIONEL RICHIE”, is confusingly similar to the registered mark, “LIONEL”, in sound, appearance, and commercial impression. Specifically, the marks sound and appear similar in that they share the identical first term, “LIONEL”. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, the marks sound and appear similar in that consumers will focus on the term “LIONEL” in both marks as the first term in each of the marks. Additionally, this term in the marks conveys the same commercial impression of someone named, “LIONEL”.
Though the applied-for mark contains an added term, this added term does not obviate the similarities of the marks. In general, adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Moreover, because registrant’s mark is wholly encompassed within applicant’s mark, purchasers are likely to believe that applicant’s mark merely identifies the previously anonymous source of registrant’s goods. In re Chica, Inc., 84 USPQ2d 1845 (TTAB 2007) (Purchasers encountering goods offered under CORAZON and CORAZON BY CHICA will view CORAZON BY CHICA as an indication of the previously anonymous source of the goods sold under the CORAZON mark); see also In re Fiesta Palms, LLC, 2007 TTAB LEXIS 51 (TTAB 2007); In re Hill-Behan Lumber Company, 201 USPQ 246 (TTAB 1978). Thus, consumers will interpret the added term “RICHIE”, in applicant’s mark as identifying the previously anonymous source of registrant’s goods sold under the mark “LIONEL”. As a result, the added phrase in applicant’s mark does not obviate the similarities between the marks.
Ultimately, when purchasers call for the goods of applicant and registrant, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods and Services
In this case, applicant’s software and entertainment information services are closely related to registrant’s computer software goods because they are frequently offered in the same channels of trade and under the same mark. See e.g., http://beebom.com/best-online-games-for-pc/ (showing the following 20 games are available online and are also downloadable: PUBG, Fortnite, Overwatch, DoTA2, CS:GO, Rocket League, Borderlands 2, Path of Exile, Titanfall 2, EVE Online, Rainbow Six Siege, World of Tanks, Hearthstone, Minecraft, League of Legends, Starcraft II, Team Fortress 2, Warframe, Terraria, Tekken 7”); See e.g., http://www.pubg.com/category/announcements/, http://www.epicgames.com/fortnite/en-US/news, http://playoverwatch.com/en-us/news (showing PUBG, Fortnite, Overwatch also offers a website featuring information in the field of entertainment such as games). The attached evidence establishes that the parties’ respective goods and services frequently travel in the same channels of trade, and are offered to the same class of class of consumers in the same field of use. Additionally, the evidence demonstrates that consumers are accustomed to seeing businesses offer websites featuring information about entertainment, namely, games, and provide game software online and in downloadable form, under the same mark. As a result, consumers encountering applicant’s and registrant’s respective goods and services at the same time are likely to mistakenly presume the goods and services originate from the same source because of the relationship between the goods and services. Consequently, applicant’s and registrant’s respective goods and services are closely related under the likelihood of confusion analysis.
See Registration Nos. 5901666, 5895558, 5898832, 5867602, 5853523, and 5834876.
This evidence establishes that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Accordingly, applicant’s and registrant’s goods and 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).]
Ultimately, because the marks are confusingly similar and the goods and services are closely related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. Therefore, registration must be refused under Section 2(d).
Response to Section 2(d) – Likelihood of Confusion Refusal-in-Part
(1) Deleting the services to which the refusal pertains; or
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87€.
IDENTIFICATION OF SERVICES OVERLY BROAD AND INDEFINITE- CLARIFICATION AND AMENDMENT REQUIRED
The wording “entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, and photographs” in the identification of services for International Class 41 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “downloadable musical performances videos, musical videos, related film clips, and photographs” in Class 9 for electronic goods, including downloadable files, and “non-downloadable musical performances videos, musical videos, related film clips, and photographs” in Class 41 for entertainment services. Therefore, applicant must amend the identification to clarify the nature of the goods and services offered and classify them accordingly.
If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
Applicant may adopt the following identification of goods and services, if accurate:
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Class 9 –
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“Downloadable musical performance
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Class 41 –
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“Record production; music production; audio recording and production; videotape production; motion picture song production; production of video discs for others; recording
studios; entertainment services, namely, producing musical audio and video programs; distribution of musical and audio and video programs; music composition and transcription for others; song writing
services; music publishing services; entertainment in the nature of live performances by a musical artist, musical group or musical band; entertainment in the nature of live visual and audio
performances by a musical artist, musical group and musical band; entertainment, namely, live music concerts; entertainment, namely, personal appearances by a musician, musical group, musical band,
entertainer, actor or celebrity; entertainment services, namely, providing a web site featuring non-downloadable musical performance |
Additions to the Identification Not Permitted
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
REQUIREMENT TO CLARIFY THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods and services that may be classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY: Multiple-Class Application Requirements for a Section 1(b) Filing Basis
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
FILING FEES FOR ADDED CLASSES
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
How to respond. Click to file a response to this nonfinal Office action
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.
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.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action.
If applicant requires technical assistance in using the online response form, applicant may email TEAS@uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.
/Tiffany Y. Chiang/
Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@uspto.gov
