| To: | Johnson, Jr. Charles K. (RegardingCKJohnson@gmail.com) |
| Subject: | U.S. Trademark Application Serial No. 88892247 - NETFLIX - N/A |
| Sent: | July 22, 2020 06:12:40 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88892247
Mark: NETFLIX
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Correspondence Address:
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Applicant: Johnson, Jr. Charles K.
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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: July 22, 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.
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. 2552950 (NETFLIX), 3194832 (NETFLIX), 3299362 (NETFLIX), 4236137 (NETFLIX), 4788783 (NETFLIX), and 5978611 (NETFLIX). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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 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.
Comparison of the Marks
The applied-for mark is: NETFLIX
The registered marks are: NETFLIX, NETFLIX in stylized form, NETFLIX, NETFLIX in stylized form set in a carrier, NETFLIX in stylized form, and NETFLIX
In the present case, applicant’s mark is NETFLIX in standard characters and registrant’s mark is NETFLIX in standard characters and in a variety of stylized. These marks are identical in wording, 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.
Comparison of the Services
The compared 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 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).
The applicant’s identified services are: “Netflix is a streaming service that allows our members to watch a wide variety of award-winning TV shows, movies, documentaries, and more on thousands of internet-connected device”
The registrant’s identified services are: “computerized on-line retail services featuring pre-recorded videos”, “Rental of pre-recorded videos”, “Rental of video recordings, digital video disks, multimedia recordings, a rental of video recordings, digital video disks, by means of communications networks; providing information, reviews and personalized recommendations in the field of entertainment; providing information, reviews and personalized recommendations in the field of entertainment by means of communications networks”, “video-on-demand transmission services; video broadcasting; transmission of voice, data, images, signals, messages and information”, “ON-LINE RETAIL STORE SERVICES FEATURING ENTERTAINMENT AND EDUCATIONAL CONTENT, NAMELY, SUBSCRIPTIONS TO MOVIES AND TELEVISION SHOWS”, “AUDIO AND VIDEO ON DEMAND TRANSMISSION; STREAMING OF AUDIO AND VISUAL CONTENT; AUDIO AND VISUAL BROADCASTING; TRANSMISSION AND DELIVERY OF AUDIO AND VISUAL CONTENT; PROVIDING AN ONLINE FORUM WHERE USERS CAN POST RATINGS, REVIEWS, AND RECOMMENDATIONS OF MOVIES AND TELEVISION SHOWS AND ON EVENTS AND ACTIVITIES IN THE FIELD OF ENTERTAINMENT AND EDUCATION”, “ENTERTAINMENT AND EDUCATIONAL SERVICES, NAMELY, PROVIDING AUDIO AND VISUAL CONTENT IN THE NATURE OF MOVIES AND TELEVISION SHOWS, AND ONLINE RECOMMENDATIONS OF MOVIES AND TELEVISION SHOWS; RENTAL AND DISTRIBUTION SERVICES FEATURING ENTERTAINMENT AND EDUCATIONAL CONTENT, NAMELY, MOVIES AND TELEVISION SHOWS; PROVIDING INFORMATION, REVIEWS, AND RECOMMENDATIONS OF MOVIES AND TELEVISION SHOWS IN THE FIELD OF ENTERTAINMENT AND EDUCATION”, “Streaming of audiovisual and multimedia content via the internet; transmission and delivery of audiovisual and multimedia content via the internet; video-on-demand transmission services”, “Entertainment and educational services, namely, providing non-downloadable movies and television shows via a video-on-demand service, as well as information, reviews, and recommendations regarding movies and television shows; providing a website featuring non-downloadable television shows, movies, and multimedia entertainment content, as well as information, reviews, and recommendations regarding television shows, movies, and multimedia entertainment content”, “Entertainment services in the nature of ongoing television series and movies in the fields of action adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, history, horror, international, musical, mystery, romance, science fiction, sports, thrillers, war, and westerns; entertainment services in the nature of conducting exhibitions and conventions concerning television and film, and television and film characters; entertainment services in the nature of development, creation, production, distribution, and post-production of motion picture films, television shows, special events, and multimedia entertainment content; entertainment services in the nature of a live theatrical, musical or comedic performance; amusement park services; production and distribution of motion picture films and television shows; providing entertainment services via a global communication network in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series; providing a website featuring entertainment information; providing online computer, electronic and video games; providing temporary use of non-downloadable interactive games; providing non-downloadable films and television shows via a video-on-demand transmission service; providing information, reviews, and recommendations regarding movies and television shows via a website and video-on-demand transmission 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 registrations use broad wording to describe a variety of streaming and provision of online video services, which presumably encompasses all services of the type described, including applicant’s more narrow services identified above. 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.
The foregoing demonstrates that a consumer familiar with registrant’s mark used on registrant’s services, upon encountering applicant’s mark used on applicant’s services would likely be confused and mistakenly believe that the services emanate from a common source. Therefore, registration is refused under Section 2(d) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
DATES OF USE CLARIFICATION REQUIRED
Therefore, applicant must clarify when applicant first used the mark anywhere by providing both (1) an amended date of first use anywhere and (2) an amended date of first use in commerce, even if they are the same. See 37 C.F.R. §§2.61(b), 2.71(c); TMEP §§903.03, 903.04. Applicant must verify these amended dates with an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.71(c), 2.193(e)(1); TMEP §903.04.
For an overview of the requirements for providing verified dates of first use and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademark/laws-regulations/dates-use.
CLASSIFICATION AND IDENTIFICATION OF SERVICES
Particular wording in the identification of services is indefinite/too broad or misclassified and must be clarified for reasons explained below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Please see specific requirements explained below in italicized lettering and suggested wording below in bold lettering. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
The following substitute wording is suggested, if accurate:
Class 038: video-on-demand transmission services; video broadcasting; transmission of voice, data, images, signals, messages and information
Class 041: Rental of pre-recorded videos that may be downloaded from an Internet web site; Provision of non-downloadable films, television programs, and movies via a video-on-demand service; providing a website featuring non-downloadable television shows, movies, and multimedia entertainment content
Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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: MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 041; and applicant needs a specimen for class 038. See more information about specimens.
Examples of specimens.
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
SUBSTITUTE SPECIMEN OR AMENDED FILING BASIS REQUIRED
Specimen does not show direct association between mark and services. Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 038. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that the provided specimen appears to advertise the provision of online videos but does not reference the provision of transmission services.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
If submitting a substitute specimen requires an amendment to the dates of use, applicant must verify the amended dates with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). For more information about dates of use and instructions for amending them using the online Trademark Electronic Application System (TEAS), see the Dates of Use webpage.
TRADEMARK COUNSEL SUGGESTED
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
/John Salcido/
John Salcido
Examining Attorney
Law Office 122
571-272-7549
John.Salcido@uspto.gov
RESPONSE GUIDANCE
