To: | MUSIC Tribe Global Brands Ltd. (USTM.docketing@SeedIP.com) |
Subject: | U.S. Trademark Application Serial No. 88621188 - PRODIGY - 790106.224 |
Sent: | December 21, 2019 07:22:46 PM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88621188
Mark: PRODIGY
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Correspondence Address: |
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Applicant: MUSIC Tribe Global Brands Ltd.
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Reference/Docket No. 790106.224
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 21, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
COMPARISON 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).
In the present case, applicant’s mark is PRODIGY and registrants’ marks are PRODIGY. 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.
COMPARISON OF THE GOODS
Applicant’s mark is for the goods “Music synthesizers; electronic audio modification equipment; digital sound processors; apparatus for electronic processing of sound; music synthesizer sold as a unit with instructional manual; synthesizers with carrying cases; and synthesizers” while registrants’ marks are for the goods “Musical instruments” and “Audio equipment, namely, amplifiers, electronic crossovers, stereo speakers, loud speakers, sound mixers, parts and fittings for all the aforesaid goods; electronic cables for connecting audio and video components together and to connect the components with loud speakers”.
The synthesizers in the application are a type of musical instrument and therefore directly overlap with the goods listed in Registration No. 3877725. Similarly, the applied-for goods, “electronic audio modification equipment; digital sound processors; apparatus for electronic processing of sound” directly overlap with the goods “Audio equipment, namely, amplifiers, electronic crossovers, stereo speakers, loud speakers, sound mixers, parts and fittings for all the aforesaid goods; electronic cables for connecting audio and video components together and to connect the components with loud speakers”. Moreover as the attached evidence from Roland, Korg and Behringe shows, these products are so closely related in nature that music instruments, audio modification and processing equipment and speakers and associated equipment are routinely distributed alongside each other and under the same mark.
In conclusion, because the applied-for mark and the registered mark make similar commercial impressions and because the goods are closely related there is a likelihood of confusion between the two marks and the applied-for mark must be refused registration under Trademark Act Section 2(d).
The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Specifically applicant must address issues with the following wording:
· The wording “electronic audio modification equipment; apparatus for electronic processing of sound” is vague and appears to identify goods which fall into class 9, not class 15. Only instruments and processors used as instruments generally fall into class 15.
· The wording “digital sound processors” identifies goods which fall into class 9, not class 15. Applicant must reclassify these goods and pay the additional fee if applicable (see below).
· The wording “synthesizers with carrying cases; and synthesizers” is vague because of the word “synthesizer”. Synthesizers are classified based on their use. Generally only music synthesizers fall into class 15.
Applicant may adopt the following identification, if accurate:
Class 9: Digital sound processors; electronic audio modification equipment, namely, [applicant must identify the types of equipment by their common commercial name, e.g., electronic effect pedals for musical instruments]; apparatus for electronic processing of sound, namely, [applicant must identify the types of apparatus by their common commercial name]
Class 15: Music synthesizers; music synthesizer sold as a unit with instructional manual; music synthesizers sold with carrying cases
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
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.
The fee for adding classes to a TEAS Plus application is $225 per class. See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a)(10); TMEP §§819.03, 819.04. See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee by regular TEAS.
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); TMEP §820.03. 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 by regular TEAS.
ADVISORY – PRIOR-FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action
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.
/David A. Brookshire/
Examining Attorney
Law Office 114
(571) 272-7991
David.Brookshire@uspto.gov
RESPONSE GUIDANCE