To: | Dominic Lappin (bob@maioranapc.com) |
Subject: | U.S. Trademark Application Serial No. 88636241 - SPIRAL - 2251.20001 |
Sent: | January 09, 2020 01:42:57 PM |
Sent As: | ecom130@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88636241
Mark: SPIRAL
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Correspondence Address:
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Applicant: Dominic Lappin
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Reference/Docket No. 2251.20001
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 09, 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.
Summary of Issues that Applicant Must Address
Refusal under Section 2(d) – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4164142 and 4654696. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant seeks to register the proposed mark SPIRAL. The cited registrations are for the marks TRIPLE SPIRAL PRODUCTIONS and VIRAL SPIRALS. These marks are quite similar because they share the term SPIRAL and they create confusingly similar commercial impressions.
Applicant seeks to register its mark for “Augmented reality video production; Multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video, and films; Music video production; Post-production editing services in the field of music, videos and film; Video editing; Video production services.” Registrants’ services are “Film and video production,” and “Provision of online games by means of a computer based system, on mobile electronic devices, including cellular telephones and via the Internet; production of documentary, entertainment and news programmes for broadcasting; advisory services relating to the production of video and online video entertainment and publishing; cinematographic adaption and editing services; cinematographic film studio services; film production for entertainment purposes; literary agency services; music recording studio services; production of cinematographic films; production of comedy shows; production of audio entertainment; production of audio recordings for entertainment purposes; production of talent shows; production of television entertainment programmes; production of television films; production of television programmes; production of computer games and applications for entertainment; production of theatre; production of video films; provision of online non-downloadable magazines and video content in the field of entertainment; entertainment in the nature of ongoing television programmes in the field of news, comedy, drama, variety and sports; entertainment services, namely, provision of non-downloadable films, and television programmes via a video-on-demand service; publication of books; production of musical recordings; production of musical works in a recording studio; on-line journals, namely, blogs featuring information in the field of entertainment and which blogs include electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content; digital video, audio and multimedia entertainment publishing services; online digital publishing services; entertainment services, namely, conducting contests; production of video; radio and sound recording services for commercial purposes including on behalf of third parties; none of the aforesaid services relating to the product of animation or animated film or television series.” These services are closely related because they include video production services.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
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.
/Curtis W. French/
Curtis W. French
Trademark Examining Attorney
Law Office 130
571-272-9472
curtis.french@uspto.gov
RESPONSE GUIDANCE