To: | Wolf Entertainment, Inc. (uspto@keatsgatien.com) |
Subject: | U.S. Trademark Application Serial No. 88594830 - WOLF - N/A |
Sent: | December 04, 2019 02:25:58 PM |
Sent As: | ecom110@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 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88594830
Mark: WOLF
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Correspondence Address: 120 S. EL CAMINO DRIVE, SUITE 207
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Applicant: Wolf Entertainment, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 04, 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.
REFUSAL UNDER SECTION 2(d) OF THE TRADEMARK ACT- LIKELIHOOD OF CONFUSION- PARTIAL REFUSAL
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 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 MARKS
Applicant’s mark is WOLF in design form.
The mark in U.S. Registration No. 5526074 is WOLF in design form.
First, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In this case, the literal element in the applied-for mark is entirely comprised of the word “WOLF” and the literal element in the cited registered mark is entirely comprised of the word “WOLF”. Thus, the marks are confusingly similar in appearance and create the same commercial impression because of the identical literal terms.
Second, the marks are phonetic equivalents, and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
In sum, the dominant portion of the applied-for mark “WOLF” is identical to the dominant portion of the cited registered mark “WOLF”, and thus the marks are confusingly similar.
RELATEDNESS OF SERVICES
The applicant’s services in relevant part are “On-line retail department store services; On-line retail gift shops; On-line retail store services featuring a wide variety of consumer goods of others.”
The services in U.S. Registration No. 5526074 are “Retail store services featuring men's clothing, accessories, hats, wallets, belts, tie links, cuffs, hankerchiefs, shoes.”
The services of the parties 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) (“[E]ven if the services in question are different from, and thus not related to, one another in kind, the same services can be related in the mind of the consuming public as to the origin of the services.”); TMEP §1207.01(a)(i).
First, the respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the 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).
Second, the attached Internet evidence consists of excerpts from web sites and this evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are provided through the same trade channels and used by the same classes of consumers in the same fields of use and the services are similar or complementary in terms of purpose.
Specifically, the attached evidence from the Kohl’s web site shows the same source provides online department store services and online retail store services featuring a wide variety of consumer goods of others as well as retail store services that feature clothing. Additionally, the attached evidence from the Burlington web site shows the same source provides an online retail gift shop as well as a retail store featuring clothing. Lastly, the attached evidence from the Shop Disney web site shows the same source provides an online retail gift shop as well as a retail store featuring clothing.
Therefore, 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).
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
In sum, the literal element of the applicant’s mark and registrant’s mark are identical, and thus create the same commercial impression and the services are commercially related and likely to be encountered together in the marketplace by consumers. 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 Lanham Act.
RESPONSE OPTION
If the applicant responds to the refusal above, the applicant must also respond to the requirement below.
AMENDMENT TO THE IDENTIFICATION OF SERVICES REQUIRED
The wording in the identification of services is too broad and must be clarified for the reasons set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Specifically, the wording “Providing information in the field of the entertainment industry” is too broad because it can include “business information” in Class 35 or “entertainment information” in Class 41, for example. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b). Classification of information services is based on the subject matter of the information provided. TMEP §1402.11(b). Therefore, the applicant must clarify the primary nature of the services contemplated and classify the services 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. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
Applicant may substitute the following wording, if accurate:
Class 35: On-line retail department store services; On-line retail gift shops; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring downloadable electronic books; On-line retail store services featuring downloadable pre-recorded music and video; Online retail store services for downloadable and pre-recorded music and movies; Providing business information in the field of the entertainment industry; Providing an on-line computer database featuring trade information in the field of entertainment and the entertainment business; Providing business information in the field of entertainment and the entertainment business; Providing business advice and information in the field of entertainment and the entertainment business; Promoting the goods and services of others by providing a website featuring information, news, and commentary in the field of the entertainment business.
Class 41: Providing entertainment information about in the field of the entertainment industry.
SCOPE ADVISORY: Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b).
The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
ASSISTANCE: For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For information on how to identify the services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”
MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY
(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 fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least two (2) classes; however, applicant submitted a fees sufficient for only one (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.
RESPONSE GUIDELINES
If the applicant has any questions, please email or telephone the trademark examining attorney with the specific questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of 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.
/Deborah L. Meiners/
Attorney Advisor
Law Office 110
(571) 272-8993
Deborah.Meiners@USPTO.gov
RESPONSE GUIDANCE