To: | Fable Group, Inc. (cbyczko@btlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88726546 - FABLE - 80972-PEND |
Sent: | March 14, 2020 05:17:20 PM |
Sent As: | ecom106@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88726546
Mark: FABLE
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Correspondence Address:
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Applicant: Fable Group, Inc.
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Reference/Docket No. 80972-PEND
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: March 14, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. The applicant must respond timely and completely to the issue 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
The applicant has applied to register the proposed mark FABLE for “Platform as a service (PAAS) featuring computer software platforms related to visual, audio and other multimedia works; platform as a service (PAAS) featuring computer software platforms for the online ordering, sampling and transmission of e-books; providing temporary use of on-line non-downloadable software and applications for accessing streaming audio, text, multimedia and video; providing on-line network services that enable users to access and share literary works; Software as a service (SAAS), namely, providing online non-downloadable software related to visual, audio and other multimedia works; Software as a service (SAAS), namely, providing online non-downloadable software for the online ordering, sampling and transmission of e-books,” in International Class 42.
The cited registered marks are as follows:
FABLE (Reg. No. 4388410) for “electronic book readers,” in International Class 9; and “online electronic publishing of books for e-book readers,” in International Class 41.”
AND
FABLE (Reg. No. 4944962) and FABLE & design (Reg. No. 4944961) for “Software-as-a-service services featuring hosted software application which functions as an authoring tool for creating interactive websites which tell a story or highlight certain aspects of a business,” in International Class 42.
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.
Comparing the Marks
In the present case, applicant’s mark is FABLE in standard characters and registrants’ marks are both FABLE in standard character. 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.
Comparing the Services
In this case, the services of the applicant are broadly written to include software and software platforms that provide software “related to visual, audio and other multimedia works,” “software for transmitting and ordering e-books,” “software for accessing streaming audio, text and multimedia and video,” and “software that enables users to access and share literary works.” The services of the cited registrations consist of “online electronic publishing of books for e-book readers” (Reg. No. 43888410) and “Software-as-a-service services featuring hosted software application which functions as an authoring tool for creating interactive websites which tell a story or highlight certain aspects of a business” (Reg. Nos. 4944962 and 4944961). Because the applicant services are listed so broadly, they could legally include software used to publish e-books, and software used as an authoring tool for creating interactive websites which tell a story.”
The marks are identical and/or share the identical literal element and create a highly similar overall commercial impression. The services, as written, are highly related. Therefore, the similarities that exist among the marks and the services are so great as to create a likelihood of confusion among consumers.
The applicant should also note the following potential ground for refusal.
Potentially Conflicting 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. However, the applicant must respond to the refusal above, and the refusal and requirements noted below.
The applicant should also note the following additional ground for refusal.
Section 2(e)(1) Refusal – Proposed Mark is Merely Descriptive
Again, the applicant has applied to register the proposed mark FABLE for “Platform as a service (PAAS) featuring computer software platforms related to visual, audio and other multimedia works; platform as a service (PAAS) featuring computer software platforms for the online ordering, sampling and transmission of e-books; providing temporary use of on-line non-downloadable software and applications for accessing streaming audio, text, multimedia and video; providing on-line network services that enable users to access and share literary works; Software as a service (SAAS), namely, providing online non-downloadable software related to visual, audio and other multimedia works; Software as a service (SAAS), namely, providing online non-downloadable software for the online ordering, sampling and transmission of e-books,” in International Class 42.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The term “FABLE” is defined as a “short story conveying a moral” and/or “a story, typically a supernatural on incorporating elements of myth and legend.” See the representative definitions for the term “fable” attached. In this case, the applicant services cover providing software and software platforms related to visual, audio, multimedia work, e-books, and for accessing and sharing literary works, etc. This wording is broad enough to include visual, audio, multimedia work, e-books, and/or accessing and sharing literary works consisting at least in part of fables.
Although the applicant’s mark has been refused registration, the applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if the applicant responds to the refusal, the applicant must also respond to the requirements set forth below.
Request for Information
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, the applicant must provide a detailed factual description of the services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions: Will the applicant’s various software services related to audio, video and multimedia words feature and/or all access to or be related to stories conveying moral or supernatural stories incorporating elements of myth and legend (i.e., fables)?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Recitation of Services Requirements
“Platform as a service (PAAS) featuring computer software platforms for ___________ (The applicant must provide the actual function or purpose of the software, e.g., composing, sharing, transmitting, etc.) visual, audio and other multimedia works; platform as a service (PAAS) featuring computer software platforms for the online ordering, sampling and transmission of e-books; providing temporary use of on-line non-downloadable software and applications for accessing streaming audio, text, multimedia and video; providing on-line network services that enable users to access and share literary works; Software as a service (SAAS), namely, providing online non-downloadable software for ___________ (The applicant must provide the actual function or purpose of the software, e.g., composing, sharing, transmitting, etc.) visual, audio and other multimedia works; Software as a service (SAAS), namely, providing online non-downloadable software for the online ordering, sampling and transmission of e-books,” in International Class 42.
For further 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.
How to respond. Click to file a response to this nonfinal Office action.
If the applicant has any questions or needs assistance with the present application, please telephone the assigned examining attorney.
/Jeffery C. Coward/
Trademark Examining Attorney
Law Office 106
Phone: (571) 272-9148
E-mail: jeffery.coward@uspto.gov
RESPONSE GUIDANCE