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 10, 2020

 

 

INTRODUCTION

 

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 PRESENTED IN THIS OFFICE ACTION:

·       Section 2(d) Refusal—Likelihood of Confusion

·       Prior-filed Application—Advisory

·       Identification Amendment Required

 

 

SECTION 2(d) REFUSAL—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. 5818336, 4844326, 4665704, 4658443, 5188754, 3060683, and 2535313.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is “ROGER”, for use with:

 

Class 16: Printed publications, namely magazines, bulletins, periodicals, alerts, brochures, flyers, circulars, pamphlets, newsletters and reports

 

Class 41: Electronic publications, namely magazines, bulletins, periodicals, alerts, brochures, flyers, circulars

 

The registered marks are as follows in the chart below:

 

	REGISTRATION NO	MARK	RELEVANT GOODS AND/OR SERVICES
1.	5818336	ROGER WEBB: PREACHER IN THE WILD	Class 41: Educational and entertainment services, namely, publication of a magazine and books in the fields of religion and hunting; providing a web site featuring information and non-downloadable videos in the field of hunting; providing a website featuring non-downloadable videos in the field of religion; providing an ongoing television show in the fields of religion and hunting that is broadcast over television, satellite, radio, audio, and video media
2.	4665704	ROGEREBERT.COM	Class 41: Entertainment services, namely, providing a website featuring information in the field of movies and books; online journals, namely, blogs featuring information in the field of movies and movie reviews; providing online non-downloadable articles and newsletters in the field of movies and movie reviews
3.	4658443	ROGER EBERT	Class 16: series of written articles and books in the field of movies and movie reviews; newsletters in the field of movies and movie reviews   Class 41: Series of on-line non-downloadable articles in the field of movies and movie reviews; entertainment services, namely, providing non-downloadable articles and newsletters and on-line interviews featuring celebrities, authors, actors, directors and producers in the field of movies and movie reviews
4.	5188754	ROGER WILLCO	Class 41: Organizing and arranging of educational conferences, congresses, and symposiums each in the field of product regulatory compliance; organizing and arranging of seminars and workshops in the field of product regulatory compliance; training in the field of data processing; publication of online texts, books, and journals; publication of online texts, books, journals that can be searched via a global computer information network; publication of data in the form of information collected into databases in the field of product regulatory compliance
5.	2535313	ROGER MCGUINN	Class 41: Entertainment and educational services in the nature of live musical and vocal performances by a musical artist; conducting entertainment exhibitions in the nature of live musical performances; music publishing services
6.	4844326	R ROGER CPA REVIEW, and design	Class 16: Printed educational materials in the field of accounting, for use in preparing students to take the Certified Public Accountants (CPA) exam, namely, course textbooks, study guides with sample practice questions with answers and solutions, and flashcards
7.	3060683	ROGER MACNAMARA	Class 16: printed anthology comprising a series of newsletters in the field of personal abuse, namely, physical, psychological or verbal abuse

 

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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of 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).

 

Applicant's mark is “ROGER” and the registrants' marks are “ROGER WEBB: PREACHER IN THE WILD”, “ROGEREBERT.COM”, “ROGER EBERT”, “ROGER WILLCO”, “ROGER MCGUINN”, “R ROGER CPA REVIEW” and design, and “ROGER MACNAMARA”. Here, applicant has merely deleted matter from the registrants' marks to create its own mark. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from these marks.

 

Therefore, the parties’ marks are confusingly similar.

 

Comparison of Goods and Services

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

As Compared to Registration No. 5818336 “ROGER WEBB: PREACHER IN THE WILD”

 

Determining likelihood of confusion is based on the description of the goods and 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 use(s) broad wording to describe “Electronic publications, namely magazines…” and “publishing services,” which presumably encompasses all services of the type described, including registrant’s more narrow “Educational and entertainment services, namely, publication of a magazine and books in the fields of religion and hunting.”  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.

 

As Compared to Registration No. 4665704 “ROGEREBERT.COM”

 

As previously discussed, 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.

 

In this case, the application use(s) broad wording to describe “Electronic publications, namely… newsletters…” which presumably encompasses all services of the type described, including registrant’s more narrow “providing online non-downloadable…newsletters in the field of movies and movie reviews.”  Thus, applicant’s and registrant’s services are legally identical. 

 

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.  Thus, applicant’s and registrant’s services are related.

 

As Compared to Registration No. 4658443 “ROGER EBERT”

 

As previously discussed, determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.

 

In this case, the application use(s) broad wording to describe “Printed publications, namely… newsletters” and “Electronic publications, namely… newsletters,” which presumably encompasses all goods and services of the type described, including registrant’s more narrow “newsletters in the field of movies and movie reviews” and “entertainment services, namely, providing non-downloadable… newsletters… in the field of movies and movie reviews.” Thus, applicant’s and registrant’s goods and services are legally identical. 

 

Additionally, the goods and 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.  Thus, applicant’s and registrant’s goods and services are related.

 

As Compared to Registration No. 5188754 “ROGER WILLCO”

 

As previously discussed, 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.

 

In this case, the application use(s) broad wording to describe “publishing services,” which presumably encompasses all services of the type described, including registrant’s more narrow “publication of online texts, books, and journals; publication of online texts, books, journals that can be searched via a global computer information network; publication of data in the form of information collected into databases in the field of product regulatory compliance.” Thus, applicant’s and registrant’s services are legally identical. 

 

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.  Thus, applicant’s and registrant’s services are related.

 

As Compared to Registration No. 2535313 “ROGER MCGUINN”

 

As previously discussed, 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.

 

In this case, the application use(s) broad wording to describe “publishing services,” which presumably encompasses all services of the type described, including registrant’s more narrow “music publishing services.”  Thus, applicant’s and registrant’s services are legally identical. 

 

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.  Thus, applicant’s and registrant’s services are related.

 

As Compared to Registration No. 3060683 “ROGER MACNAMARA”

 

As previously discussed, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.

 

In this case, the application use(s) broad wording to describe “Printed publications, namely… newsletters,” which presumably encompasses all goods of the type described, including registrant(s)’s more narrow “printed anthology comprising a series of newsletters in the field of personal abuse, namely, physical, psychological or verbal abuse.” Thus, applicant’s and registrant’s goods are legally identical. 

 

Additionally, the goods 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.  Thus, applicant’s and registrant’s goods are related.

 

As Compared to Registration No. 4844326 “R ROGER CPA REVIEW, and design”

 

As previously discussed, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. 

 

In this case, the application use(s) broad wording to describe “Printed publications, namely …alerts…,” which presumably encompasses all goods of the type described, including registrant’s more narrow “Printed educational materials in the field of accounting, for use in preparing students to take the Certified Public Accountants (CPA) exam, namely, course textbooks, study guides with sample practice questions with answers and solutions, and flashcards.” Specifically, applicant's “printed alerts” could reasonably encompass any type of printed publications, as this wording does not identify a particular identifiable type of publication. Thus, applicant’s and registrant’s goods are legally identical. 

 

Additionally, the goods 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.  Thus, applicant’s and registrant’s goods are related.

 

Conclusion

 

The relatedness of the goods and services here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement which follows the advisory below.

 

 

PRIOR-FILED APPLICATION—ADVISORY

 

The filing date of pending U.S. Application Serial No. 79263828 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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 AMENDMENT REQUIRED

 

Class 16

 

The identification of goods is indefinite and must be clarified because it is overly vague.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the current wording makes unclear the specific subject matter or field of applicant's printed publications. Applicant must amend its identification to indicate this explicitly.

 

Class 41

 

The wording “Electronic publications, namely magazines, bulletins, periodicals, alerts, brochures, flyers, circulars, pamphlets, newsletters and reports” in the identification of services is indefinite and must be clarified because it is overly vague.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the current wording makes unclear the specific subject matter or field of applicant's printed publications. Applicant must amend its identification to indicate this explicitly.

 

The wording “publishing services” in the identification of services is indefinite and must be clarified because it is overly vague.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the current wording makes unclear the specific type of publishing services applicant provides. Applicant must amend its identification to indicate this explicitly.

 

Suggested Wording

 

If accurate, applicant may adopt the following wording:

 

Class 16: Printed publications, namely magazines, bulletins, periodicals, alerts in the nature of {indicate specific nature of printed publication, e.g., newsletters}, brochures, informational flyers, circulars, pamphlets, newsletters and reports in the field of {indicate subject matter or field, e.g., tourism, music}

 

Class 41: Providing online, non-downloadable electronic publications in the nature of magazines, bulletins, periodicals, alerts in the nature of {indicate specific nature of printed publication, e.g., newsletters}, brochures, informational flyers, circulars, pamphlets, newsletters and reports in the field of {indicate subject matter or field, e.g., tourism, music}; publishing services, namely, {indicate specific publishing services, e.g., music publishing services, digital video, audio, and multimedia publishing services}

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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 10, 2020 for

U.S. Trademark Application Serial No. 88722249

 

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. 

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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 10, 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.”