To: | MONDADORI MEDIA S.p.A. (tmdocket@arentfox.com) |
Subject: | U.S. Trademark Application Serial No. 90094846 - ICON - 028702.00050 |
Sent: | November 30, 2020 11:51:03 AM |
Sent As: | ecom101@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90094846
Mark: ICON
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Correspondence Address:
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Applicant: MONDADORI MEDIA S.p.A.
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Reference/Docket No. 028702.00050
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: November 30, 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
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.
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).
The goods and services of the cited marks are identical or closely related to the applicant’s goods and services. As such, there is a great likelihood of confusion as to source.
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.
IDENTIFICATION OF GOODS AND SERVICES
The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. “Electronic publications” must also specify whether downloadable or recorded on computer media. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The identification of goods and services is indefinite and must be clarified because it is unclear and confusingly duplicative. “Style” is overly broad, and seems to be covered by “fashion” and “lifestyle.” Magazines are a type of periodical. “Advertisements” are generally not goods in trade. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate:
“Audio books, downloadable books, books, magazines and newspapers, and electronic books, magazines and newspapers recorded on computer media in the fields of news, lifestyle, fashion, beauty and luxury products; downloadable mobile applications for providing access to online news articles regarding lifestyle, fashion, beauty and luxury products; downloadable podcasts in the fields of news, lifestyle, fashion, beauty and luxury products; downloadable augmented and virtual reality software for playing computer games; downloadable computer game software; sunglasses; frames for eyeglasses and pince-nez; eyeglasses,” in class 9;
“Newspapers; comics; printed leaflets, journals, periodicals, books and flyers in the fields of news, lifestyle, fashion, beauty and luxury products; book plates; printed advertising boards of cardboard and paper,” in class 16;
“Advertising, marketing and promotional services for publications concerning fashion and beauty and purveyors of clothing fashions and beauty products; publication of publicity materials in the fields of fashion and beauty, and publications concerning fashion and beauty; advertising services for the promotion of e-commerce in the fashion, beauty and publishing fields; business administration of consumer loyalty programs in the fields of clothing fashion and beauty; customer loyalty and customer club services for commercial, promotional and/or advertising purposes in the field of clothing and fashion accessories; newspaper subscriptions and subscriptions to electronic journals in the fields of fashion and beauty; provision of consumer information and advice regarding the selection of fashion products and services to be purchased; electronic commerce services, namely, providing information about clothing, fashion and beauty products via telecommunication networks for advertising and sales purposes; publicity and sales promotion services relating to goods and services in the fields of fashion and beauty,” in class 35;
“Providing on-line chat rooms and electronic bulletin boards for transmission of messages among computer users concerning news, lifestyle, fashion, beauty and luxury products; chatroom services for social networking; transmission of podcasts,” in class 38;
“On-line journals, namely, blogs featuring news, style, lifestyle, fashion and luxury products; providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of news, lifestyle, fashion, beauty and luxury products; entertainment services, namely, providing webcasts in the fields of fashion, beauty and lifestyle; entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring fashion, beauty and lifestyle; providing a website featuring entertainment information concerning luxury lifestyles; providing a website featuring entertainment information in the fields of fashion, beauty and luxury lifestyles; providing an Internet website portal in the field of entertainment, cultural and sporting events; providing online non-downloadable electronic publications in the nature of books, magazines and newspapers in the fields of news, lifestyle, fashion and luxury products; publishing of web magazines in the fields of news, lifestyle, fashion, beauty and luxury products; online electronic publishing and publication of books and periodicals in the fields of news, lifestyle, fashion and luxury products; multimedia publishing services; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; entertainment services, namely, providing video podcasts in the fields of news, lifestyle, fashion, beauty and luxury products; entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes; augmented reality video production; providing online augmented reality games; entertainment in the nature of fashion shows; fashion modeling for entertainment purposes; video production services; television show production; provision of information relating to live entertainment; entertainment services in the nature of live visual and audio performances, namely, musical, variety, news and comedy shows; organization of fashion shows for entertainment purposes,” in class 41;
“Providing a website featuring information about beauty and lifestyle wellness,” in class 44.
“Providing a website featuring fashion information and the fashionista lifestyle,” in class 45.
ONLINE ID MANUAL
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least seven classes; however, applicant submitted fees sufficient for only five classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
WHO CAN SIGN FOR APPLICANT
“Attorney in fact” would not be considered a proper signatory to a response to this Office action. See 37 C.F.R. §§2.17(a), 2.62(b). The USPTO cannot accept a response signed by an improper party.
Who can sign the response.
Applicant has an attorney. The attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §712.01. The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, and (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are working under a qualified U.S.-licensed attorney. See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e); TMEP §602.
The USPTO must receive a properly signed response before the deadline or the USPTO will consider the application abandoned. 37 C.F.R. §2.65(a); TMEP §718.03. In such case, applicant may file a new application with a new fee. A petition to the Director to reverse the holding of abandonment may be granted in very limited circumstances as outlined in TMEP §1713.01.
How to respond. Click to file a response to this nonfinal Office action.
/Ira Goodsaid/
Ira Goodsaid
Trademark Examining Attorney
Law Office 101
571-272-9166
ira.goodsaid@uspto.gov
RESPONSE GUIDANCE