Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  March 02, 2020

 

 

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.

 

SUMMARY OF ISSUES:

• SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
• INDEFINITE AND OVERLY BROAD IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

 

The stated refusal refers to the services listed below for applicant and does not bar registration for the other services not listed.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 1967575.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s applied-for mark is CENTURY: AGE OF ASHES, in Class 41, for Entertainment services, namely, continuing television programs and interactive television programs featuring comedy, drama, live-action, and animation, broadcast over television, satellite, audio, and video media; production and distribution of motion pictures.

 

The mark in Registration No. 1967575, is CENTURY, in Class 41, for distribution of motion picture films and television programs.

 

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 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

That the marks begin with the same word CENTURY is particularly important because consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part with respect to CENTURY.  Because both marks begin with word, consumers will find the marks confusingly similar.  Specifically, consumers will view applicant’s services as a subset of the CENTURY services of registrant.

 

Ultimately, when consumers call for the goods and services of applicant and registrant using marks that consist of the identical term CENTURY, they are likely to be confused as to the source of those goods and services due to the overall similarity between the marks. Thus, the marks are confusingly similar. 

 

Relatedness of the Services

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe the relevant services, namely, production and distribution of motion pictures, which presumably encompasses all goods and services of the type described, including registrant’s more narrow services, namely, distribution of motion picture films and television programs.  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 services 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 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 services are related.

 

Because applicant and registrant have at least one identical service in the relevant class, it is not necessary for the examining attorney to submit evidence of relatedness for every service that applicant has recited in that class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (It is sufficient for a finding of likelihood of confusion if the relatedness is established for any item encompassed by the identification of goods within a particular class in the application); see also Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc. et al, 102 USPQ2d 1187 (TTAB 2012) (“Likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application.”); Hewlett-Packard Dev. Co., L.P. v. Vudu, Inc., 92 USPQ2d 1630, 1633 n.4 (TTAB 2009) (“[I]t is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration”) (internal citations omitted).

 

For the foregoing reasons, the marks are confusingly similar and the evidence shows that the services are commercially related and likely to be encountered together in the marketplace by consumers.  As a result, consumers are likely to be confused and mistakenly believe that the services originate from a common source. Therefore, registration is refused under Section 2(d) of the Trademark Act.

 

RESPONDING TO THE SECTION 2(d)—LIKELIHOOD OF CONFUSION REFUSAL

 

Although the examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

REQUIREMENT

 

If applicant responds to the refusal above, applicant must respond to the following requirement.

 

INDEFINITE AND OVERLY BROAD IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

Applicant must clarify the wording “software games that are downloadable from a remote computer site and on websites on a global computer network in connection with the software games; comics featuring works of fiction; Entertainment services, namely, continuing television programs and interactive television programs featuring comedy, drama, live-action, and animation, broadcast over television, satellite, audio, and video media; presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; entertainment services in the nature of conducting eSports and video game contests, tournaments and competition; on-line non-downloadable publications, namely, on-line magazines featuring information, news and commentary in the field of video games” in the identification of goods and services because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because applicant has not specified the precise nature of the goods and services.

 

Applicant may substitute the following wording, if accurate:

 

Class 09—      Software and electronic games, namely, software games recorded on digital video discs for computers; software games recorded on digital video discs for console; downloadable game software that is downloadable from a remote computer site and on websites on a global computer network in connection with the software games.

 

Class 16—      Series of fiction books; comics being works of fiction; comic books; printed books in the field of video games; coffee table books featuring video games; note books; school writing books; blank journal books; coloring books; stickers; posters; pen holders; highlighter pens; coloured pens; ink pens

 

Class 25—      Clothing, namely, headwear; Beachwear; belts; bottoms as clothing; cloaks; cloth bibs; coats; chaps; costumes for use in role-playing games; Costumes for use in children's dress up play; beach cover-ups; dresses; ear muffs; footwear; gloves; Halloween costumes; masquerade costumes; headwear; hosiery; infant wear; jackets; leotards; lingerie; loungewear; mittens; overalls; pants; ponchos; rainwear; scarves; shirts; shorts; sleepwear; socks; sweaters; sweatshirts; swimwear; suits; ties as clothing; tops as clothing; underwear; wrist bands as clothing; hats; caps being headwear; beanies

 

Class 41—      Entertainment services, namely, providing on-line computer games for others over global and local area computer networks; providing information on-line relating to computer games and video games; Entertainment services, namely, a continuing comedy, drama, news, and variety show broadcast over television, satellite, audio, and video media; presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances, namely, entertainment in the nature of live stage show performances in the nature of [specify, e.g., plays, etc.]; production and distribution of motion pictures; arranging of contests; providing amusement park and theme park services; organizing, conducting and operating video game competitions and tournaments; entertainment services in the nature of conducting electronic sports and video game contests, tournaments and competition; entertainment services, namely, live performances by video game players; entertainment services, namely, providing entertainment and amusement center services, namely, interactive play areas; organization of exhibitions for cultural or educational purposes; providing on-line non-downloadable electronic publications in the nature of on-line magazines featuring information, news and commentary in the field of video games.

 

SCOPE ADVISORY

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

ADVISORY – VOLUNTARY DISCLAIMER NOT REQUIRED

 

The application includes a disclaimer of the following matter in the applied-for mark:  “CENTURY.”  An applicant may voluntarily disclaim matter in a mark regardless of whether the matter is registrable.  TMEP §1213.01(c); see 15 U.S.C. §1056(a).  However, a disclaimer of this matter is not required.

 

Therefore, applicant may request to withdraw this disclaimer from the application.  If applicant does not expressly request its withdrawal, the disclaimer will remain in the application and will be printed on the registration certificate.

 

Responding to this office action

 

Response guidelines.  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..

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Jesse Nelman/

Jesse Nelman

Examining Attorney

Law Office 113

(571) 272-0191

jesse.nelman@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 02, 2020 for

U.S. Trademark Application Serial No. 88709357

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jesse Nelman/

Jesse Nelman

Examining Attorney

Law Office 113

(571) 272-0191

jesse.nelman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 02, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”