To: | Gibson Hazard LLC (gsultan@eisnerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88837959 - GIBSON HAZARD - N/A |
Sent: | June 10, 2020 02:03:48 PM |
Sent As: | ecom122@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 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88837959
Mark: GIBSON HAZARD
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Correspondence Address: |
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Applicant: Gibson Hazard LLC
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Reference/Docket No. N/A
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: June 10, 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
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4647906 and 4647901 (“HAZARD STUDIOS”); and 4001676 (“HAZARD CREATIVE”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant’s applied-for mark is “GIBSON HAZARD”, in standard characters, for “Music video production; Film and video production; Production of sound and music video recordings; Filming and recording of concerts and live performances; Video production services” in Class 41.
Registrants’ marks are “HAZARD STUDIOS”, in standard characters and in stylized font with design, for “Entertainment services, namely, production of special effects including model-making services, computer-generated imagery and computer-generated graphics for the production of motion pictures, videos, and movie trailers; film and video production” in Class 41 (U.S. Registration Nos. 4647906 and 4647901, respectively); and “HAZARD CREATIVE”, in standard characters, for “Graphic and multimedia design services for others” in Class 42 (U.S. Registration No. 4001676).
Comparison 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
U.S. Registration Nos. 4647906 and 4647901 (“HAZARD STUDIOS”); and 4001676 (“HAZARD CREATIVE”)
Applicant’s applied-for mark is “GIBSON HAZARD” in standard characters.
Registrants’ marks are “HAZARD STUDIOS” in standard characters and in stylized font with design (U.S. Registration Nos. 4647906 and 4647901, respectively); and “HAZARD CREATIVE” in standard characters (U.S. Registration No. 4001676).
Applicant’s applied-for mark is similar to the registered marks because applicant’s mark share a similar term with the registered marks. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In the present case, applicant’s mark contains the wording “HAZARD”. Similarly, registrants’ marks begin with the wording “HAZARD”. Furthermore, the additional wording in the registered marks, namely, “STUDIOS” and “CREATIVE” have both been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Although the wording “HAZARD” is not the first term in applicant’s applied-for mark, the marks have a similar overall commercial impression of services performed by someone with the last name “HAZARD”. Applicant’s mark merely adds a first name to the registered marks. Adding a first name or initials to a registered mark consisting of a surname does not obviate the similarity between the marks, but rather, as in this case, would likely cause a consumer to believe that the applied-for mark and the registered mark refer to the same person. See In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (holding C.H. HANSON for various hand tools confusingly similar to HANSON for related hand tools) (citing In re Chatham Int’l, Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (holding JOSE GASPAR GOLD for tequila confusingly similar to GASPAR’S ALE for beer and ale); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1446-47 (TTAB 2014) (holding BRUCE WINSTON for gemstones and jewelry confusingly similar to WINSTON for polished diamonds and jewelry); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN for luggage, wallets, and various bags confusingly similar to EDELMAN for identical goods in part); Somerset Distilling Inc. v. Speymalt Whisky Distribs. Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989) (holding JAS. GORDON and design for scotch whiskey confusingly similar to GORDON’S for distilled alcoholic beverages, including gin and vodka)).
Therefore, the marks are similar for likelihood of confusion purposes.
Comparison of the Services
U.S. Registration Nos. 4647906 and 4647901 (“HAZARD STUDIOS”)
Applicant’s services are identified as “Music video production; Film and video production; Production of sound and music video recordings; Filming and recording of concerts and live performances; Video production services” in Class 41.
Registrant’s services are identified as “Entertainment services, namely, production of special effects including model-making services, computer-generated imagery and computer-generated graphics for the production of motion pictures, videos, and movie trailers; film and video production” in Class 41.
In this case, the registrations use broad wording to describe “film and video production,” which presumably encompasses all services of the type described, including applicant’s more narrow types of “film and video production.” 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.
U.S. Registration No. 4001676 (“HAZARD CREATIVE”)
Applicant’s services are identified as “Music video production; Film and video production; Production of sound and music video recordings; Filming and recording of concerts and live performances; Video production services” in Class 41.
Registrant’s services are identified as “Graphic and multimedia design services for others” in Class 42.
The attached Internet evidence, consisting of website screenshots from http://heliumfilms.us/ (provides video production services and graphic design services, all under the same mark), http://planetvoodoo.org/services/ (same), http://manleyfilms.com/ (same), and http://www.stepupyourrep.com/ (same), establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
Accordingly, registration is refused under Section 2(d) of the Trademark Act.
PRIOR-FILED APPLICATION(S) ADVISORY
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.
Applicant may adopt the following identification, if accurate:
Class 41: Music video production; Film and video production; Production of sound and music video recordings; Videography services, namely, filming and recording of concerts and live performances; Video production services
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.
NAME OF INDIVIDUAL INQUIRY
To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”).
However, if the name in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.” If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement: “GIBSON HAZARD identifies [specify actual name], a living individual whose consent is of record.”
(2) A written consent, personally signed by the named individual(s), as follows: “I, [specify name], consent to the use and registration of my name, GIBSON HAZARD, as a trademark and/or service mark with the USPTO.”
For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage.
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.
SIGNATURE REQUIREMENT – APPLICATION NOT PROPERLY VERIFIED DUE TO UNAUTHORIZED METHOD
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
RESPONSE TO OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action.
/Corinne Kleinman/
Corinne Kleinman
Examining Attorney
Law Office 122
571-272-7461
corinne.kleinman@uspto.gov
RESPONSE GUIDANCE