To: | PEACOCK TV LLC (TM-CT@cantorcolburn.com) |
Subject: | U.S. Trademark Application Serial No. 88616942 - PEACOCK - xxx0490TUS |
Sent: | January 03, 2020 03:11:08 PM |
Sent As: | ecom102@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88616942
Mark: PEACOCK
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Correspondence Address: |
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Applicant: PEACOCK TV LLC
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Reference/Docket No. xxx0490TUS
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: January 03, 2020
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’s mark is PEACOCK (and design) for, in relevant part, “advertising services; business-to-business advertising services; advertising analysis services; rental of advertising time; digital advertising services; dissemination of advertising for others via wireless networks, the Internet, cable, satellite, and global, regional, and local computer networks; Internet and online advertising, marketing, and promotional services; providing space on mobile devices, software applications, and websites for advertising goods and services;” and “customer loyalty services and customer club services, for commercial, promotional, advertising, and customer engagement purposes.”
The cited marks are:
PEACOCK NINE for “business marketing and business planning consulting services, conducting marketing studies for others, business management consulting, advertising services, namely, creating corporate and brand identity for others and developing promotional campaigns relating to the brands of others” in Registration No. 2884813 and
WICKED PEACOCK for, in relevant part, “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Advertising and marketing services, namely, promoting the goods and services of others.”
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.
SIMILARITY OF THE MARKS
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 mark is PEACOCK and design and registrants’ marks are PEACOCK NINE and WICKED PEACOCK.
In this case, all of the compared marks contain the identical term PEACOCK, meaning the marks are identical, in part, in sound, appearance, meaning and commercial impression.
Applicant’s design element does not obviate a likelihood of confusion, as the literal portion of the mark, PEACOCK, is the portion of the mark consumers will remember and use to refer to the applicant’s services. 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)).
Thus, due to the similarity in sound, appearance, meaning, and commercial impression, the marks are confusingly similar.
RELATEDNESS OF THE SERVICES
Applicant’s services are “advertising services; business-to-business advertising services; advertising analysis services; rental of advertising time; digital advertising services; dissemination of advertising for others via wireless networks, the Internet, cable, satellite, and global, regional, and local computer networks; Internet and online advertising, marketing, and promotional services; providing space on mobile devices, software applications, and websites for advertising goods and services;” and “customer loyalty services and customer club services, for commercial, promotional, advertising, and customer engagement purposes.”
Registrant’s services are “business marketing and business planning consulting services, conducting marketing studies for others, business management consulting, advertising services, namely, creating corporate and brand identity for others and developing promotional campaigns relating to the brands of others” and “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Advertising and marketing services, namely, promoting the goods and services of others.”
In this case, the compared services are related because they are of a type that commonly emanate from a single source. The attached Internet evidence, from Kexino, Marketing for Change, PBJ, and Topfloor Marketing, a representative sampling of advertising and marketing companies establishes that the same entity commonly provides the relevant services and markets services under the same mark. All of these companies offer advertising and marketing services generally, and also in the field of online, internet, mobile, social media, digital, ad and marketing campaigns (including customer loyalty campaigns), ad rentals and search engine optimization. All of these companies create and disseminate marketing materials and promote the goods and services of others. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
IDENTIFICATION OF SERVICES
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.
RESPONDING TO THIS 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.
How to respond. Click to file a response to this nonfinal Office action.
/Coleman, Cimmerian/
Trademark Examining Attorney
Law Office 102
571-272-9146
cimmerian.coleman@uspto.gov
RESPONSE GUIDANCE