Offc Action Outgoing

FABLE

Fable Group, Inc.

U.S. Trademark Application Serial No. 88726546 - FABLE - 80972-PEND


United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 88726546

 

Mark:  FABLE

 

 

 

 

Correspondence Address: 

CAITLIN R. BYCZKO

BARNES & THORNBURG LLP

11 SOUTH MERIDIAN STREET

INDIANAPOLIS, IN 46204

 

 

 

Applicant:  Fable Group, Inc.

 

 

 

Reference/Docket No. 80972-PEND

 

Correspondence Email Address: 

 cbyczko@btlaw.com

 

 

 

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.

 

SUMMARY OF ISSUES:

  • Section 2(d) Refusal – Likelihood of Confusion
  • Potentially Conflicting Prior Pending Application
  • Section 2(e)(1) Refusal – Proposed Mark is Merely Descriptive
  • Request for Information
  • Recitation of Services Requirements

 

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. 4388410, 4944962 and 4944961.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

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).  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)).

 

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

 

            As to Reg. Nos. 4388410 and 4944962:  In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

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. 

 

            As to Reg. No. 4944961:  Although the registration has a slight design element, the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Importantly, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Comparing the Services

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

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

The trademark examining attorney searched the USPTO database of registered and pending marks and has also found a prior-filed pending application that may present a bar to registration of applicant’s mark. 

 

The filing date of pending U.S. Application Serial No. 87/772452 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.  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

Registration is refused because the applied-for mark merely describes a feature, characteristic or purpose of the applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

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

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark: 

 

(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

The wording “Platform as a service (PAAS) featuring computer software platforms related to visual, audio and other multimedia works” and “Software as a service (SAAS), namely, providing online non-downloadable software related to visual, audio and other multimedia works” in the recitation of services is indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific;.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant should adopt the following recitation with changes, if accurate:

 

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.

 

The 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 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

  • 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.  

 

 

 

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U.S. Trademark Application Serial No. 88726546 - FABLE - 80972-PEND

To: Fable Group, Inc. (cbyczko@btlaw.com)
Subject: U.S. Trademark Application Serial No. 88726546 - FABLE - 80972-PEND
Sent: March 14, 2020 05:17:21 PM
Sent As: ecom106@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 14, 2020 for

U.S. Trademark Application Serial No. 88726546

 

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. 

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

E-mail: jeffery.coward@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 14, 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.”

 

 

 


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