To: | Peacock TV LLC (TM-CT@cantorcolburn.com) |
Subject: | U.S. Trademark Application Serial No. 88669316 - P - NBC0546TUS |
Sent: | January 06, 2020 11:21:43 AM |
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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88669316
Mark: P
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Correspondence Address: |
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Applicant: Peacock TV LLC
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Reference/Docket No. NBC0546TUS
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 06, 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 P for, in relevant part, “Software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers.”
Registrant’s mark is P for, in relevant part, “Computer software for use in database management, use as a spreadsheet, and word processing; computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via global computer network; apparatus for recording, transmission or reproduction of sound or images; computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; all the foregoing relating to the fields of finance, financial transactions or financial transaction management or execution and not relating to sports or a sports team, league, mascot or stadium.”
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 P in stylized characters with a design and registrant’s mark is P in standard characters. The literal element of applicant’s mark is identical in sound, meaning, and commercial impression, and nearly identical in appearance. Applicant’s use of stylized font and a design does not obviate the likelihood of confusion between the marks.
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 GOODS
Applicant’s goods are “software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers.”
Registrant’s goods are “Computer software for use in database management, use as a spreadsheet, and word processing; computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via global computer network; apparatus for recording, transmission or reproduction of sound or images; computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; all the foregoing relating to the fields of finance, financial transactions or financial transaction management or execution and not relating to sports or a sports team, league, mascot or stadium.”
In this case, the application uses broad wording to describe “software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “computer software for use in database management, use as a spreadsheet, and word processing; computer software for facilitating financial transactions, namely, 3-commerce software to allow users to perform electronic business transactions via global computer network computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; all the foregoing relating to the fields of finance, financial transactions or financial transaction management or execution and not relating to sports or a sports team, league, mascot or stadium.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the goods at issue are closely related.
PRIOR PENDING 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.
IDENTIFICATION OF GOODS
The wording “digital media, namely, downloadable audio visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos” is indefinite because it does not describe the format of the content. Further, “entertainment” is the purpose of the content, but does not describe the subject matter.
The wording “pre-recorded media, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, hard drives and discs, flash or “thumb” drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos” repeats the terms “hard drives and discs”. Applicant may further define the repeated wording or remove it.
The wording “pre-recorded media, namely, sold-state and semiconductor memories, hard drives and discs, magnetic memories, hard drives and discs, flash or “thumb” drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs featuring music and music videos, video and audio cassettes, and laser discs, featuring news, entertainment, sports, comedy, drama, music, and music videos” is confusing because it is unclear if the audio cassettes and laser discs are included as “prerecorded media” or not.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may substitute the following wording, if accurate (suggestions in bold)
Class 9: Downloadable game software applications for mobile electronic devices and portable electronic devices, namely, mobile phones, cell phones, smartphones, handheld game consoles, tablet computers, laptop computers, and notebook computers; Downloadable computer software for playing audio-visual media content; Downloadable video search and annotation software; Downloadable computer software for streaming audio-visual media content to mobile electronic devices and computers; Downloadable ad tracking and optimization software; Downloadable video game software; Downloadable interactive game programs; Downloadable software platform for providing programmatic interfaces for third parties to access website content and data for web development and website application development; Downloadable interactive computer and video game programs featuring video content from motion pictures, television programming, or music videos; Digital media, namely, downloadable audio-visual recordings in the fields of news, entertainment, sports, comedy, drama, music and music videos; Pre-recorded digital media devices, namely, solid-state and semiconductor memories, hard drives and discs, magnetic memories, flash drives, USB drives, memory cards, memory sticks, DVDs, CDs, optical discs, interactive discs, all featuring music and music videos; Pre-recorded video and audio cassettes, and laser discs, all featuring news, sports, comedy, drama, music, and music videos
Class 41: Providing online non-downloadable video game and interactive game software
Class 42: Providing online non-downloadable computer software for playing audio-visual media content; Providing online non-downloadable computer software for playing audio-visual media content; Providing online non-downloadable video search and annotation software; Providing online non-downloadable computer software for streaming audio-visual media content to mobile electronic devices and computers; Providing online non-downloadable ad tracking and optimization software; Platform as a service (PaaS) services featuring software platforms for providing programmatic interfaces for third parties to access website content and data for web development and website application development
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.
REQUIREMENTS FOR A MULTIPLE-CLASS APPLICATION
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). 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.
RESPONDING TO THIS 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.
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