UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88975112
MARK: AVATAR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Twentieth Century Fox Film Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/13/2019
This Office action is supplemental to and supersedes the previous Office action issued on March 7, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, refusal pertains to a prior pending application as well as prior registered mark.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated March 7, 2019. The issue(s) raised in the previous March 7, 2019 Office action is as follows and is maintained: Identification of goods.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Likelihood of Confusion
Applicant must respond to all issues raised in this Office action and the previous March 7, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5029429. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Applicant seeks to register “AVATAR” and design for use on “Bakery goods; bread mixes; brownie, cookie, and cake mixes; candy; cereal based energy bars; cereal-based snack foods; chewing gum; chocolate; cocoa; coffee; cones for ice cream; cookies; corn chips; crackers; flavored ices; frozen confections; frozen yogurt; ice cream; ice pops; instant noodles; marshmallows; oatmeal; pancake mixes; pastries; pies; pizza; popcorn; pretzels; processed cereal; puddings; sweets; syrup; tea; waffles.”
The registered mark is “AVATAR” for, among other things, “herbal tea.”
Applicant’s mark closely resembles the registrant’s mark because it completely incorporates the registrant’s mark, which is distinctive per se. The fact that applicant’s mark includes the entirety of another’s mark may lead the ordinary consumer to perceive that the source of the mark “AVATAR BLENDS OF COFFEE” is the same as the source for “AVATAR” alone.
Furthermore, applicant’s and the registrant’s goods are closely related, because they are similar in nature and function and often travel in the same channels of commerce and provided by same sources.
Applicant’s mark closely resembles the registrant’s mark and the goods identified by these marks are closely related. When used on its identified goods, applicant’s mark may cause confusion or mistake to the ordinary consumers as to the source of such goods in relation to the registrant’s mark. Based on the above discussion, the examining attorney has determined to refuse registration of applicant’s mark.
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 requirement set forth below.
Applicant may adopt the following wording, if accurate:
“Bakery goods; bread mixes; brownies, cookies, and cake mixes; candy; cereal based energy bars; cereal-based snack foods; chewing gum; chocolate; cocoa; coffee; cones for ice cream; cookies; corn chips; crackers; flavored ices; frozen confections; frozen yogurt; ice cream; ice pops; instant noodles; marshmallows; oatmeal; pancake mixes; pastries; pies; pizza; popcorn; pretzels; processed cereals; puddings; sweets; syrup for flavoring food or beverages, for making tea; tea; waffles; applesauce; ice milk and frozen yogurt,” in International Class 30.
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. 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.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Naakwama Ankrah/
Trademark Attorney Advisor
Law Office 109
571-272-9315
naakwama.ankrah@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.