To: | Studio Distribution Services LLC (USTrademarks@warnerbros.com) |
Subject: | U.S. Trademark Application Serial No. 90098185 - SDS STUDIO DISTRIBUTION SERVICES - 20/M74717047 |
Sent: | December 07, 2020 05:36:04 PM |
Sent As: | ecom110@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 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90098185
Mark: SDS STUDIO DISTRIBUTION SERVICES
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Correspondence Address: 156 BRIDGE BLDG. NORTH, 5TH FLOOR
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Applicant: Studio Distribution Services LLC
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Reference/Docket No. 20/M74717047
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: December 07, 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.
The following is a SUMMARY OF ISSUES that applicant must address:
• 2(d) Likelihood of Confusion Refusal
• Disclaimer Required
2(d) LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks, SDS and SDS and Design in U.S. Registration Nos. 5315263 and 5315264. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
COMPARISON OF MARKS
Applicant’s stylized mark is SDS STUDIO DISTRIBUTION SERVICES for services in International Classes 035, and the above indicated registrants’ marks include the sole literal letters, SDS for services in International Class 035.
The first part of both the applicant and registrant’s marks are the same, in that they all include SDS.
Also, 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).
Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. In this instance, the literal portion of registrant’s mark, SDS, is entirely incorporated within the applicant’s stylized mark, namely, SDS STUDIO DISTRIBUTION SERVICES.
In regard to the differences between the marks, namely, the addition of design or stylized elements and added wording, some of which is disclaimed. 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).
Further, the design elements of the registrant’s marks and the stylized features of the applicant’s mark does not overcome the likelihood of confusion between the marks. The word portions of the marks in relevant part 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).
Applicant’s mark creates the same commercial impression as the registrant’s marks.
In light of the above discussion, the examiner finds that consumers are likely to confuse applicant’s mark with the above registered marks.
COMPARISON OF SERVICES
In the instant case, the applicant provides, distributorship services for others in the field of pre-recorded DVDs and other digital recording media in the nature of video cassettes, laser discs, digital video discs, digital versatile discs, pre-recorded optical and magneto-optical discs featuring live-action, comedy, dram and animated picture films in International Class 035.
▪ The registrant for U.S. Registration Nos. 5315263 and 5315264 for SDS and SDS and Design, provides, Distributorship services for others in the fields of confectioneries and general consumer goods in International Class 035.
When analyzing an applicant and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the applicant and registrant’s services are virtually identical, in that, both the applicant and the registrant provide distributorship service.
In a third-party registration, the full scope of the goods and/or services must be considered. In re Country Oven, Inc., 2019 USPQ2d 443903, at *9 (TTAB 2019). Specifically, “a registration that describes goods [or services] broadly is presumed to encompass all goods or services of the type described.” In re Country Oven, Inc., 2019 USPQ2d 443903, at *9 (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014)). Accordingly, the term(s) distributorship services featuring… general consumer goods in the registrations (U.S. Registration Nos. 5315263, 5315264, and 5315265) are broad enough to encompass the distributorship services featuring pre-recorded DVDs and other digital recording media …featuring animated motion picture films in the application. Therefore, based upon the above analysis, the applicant and the registrant’s goods and services are deemed related.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, distributorship services featuring general consumer goods and distributorship services featuring pre-recorded data storage media, along with motion picture goods and services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
In light of the above discussion, applicant’s goods and/or services are deemed to be related to the above registration as explained.
After the comparison of the similarities between applicant and registrants’ marks and goods and/or services, the examining attorney has determined that consumers are likely to be confused between the marks because they create an overall similar commercial impression.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
DISCLAIMER REQUIRED
Applicant must disclaim the wording, “DISTRIBUTORSHIP SERVICES” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Collins online dictionary shows this wording means a company that supplies goods to shops or other businesses, or the right to supply goods to shops and businesses. Thus, the wording merely describes applicant’s services because applicant provides distributorship services. See http://www.collinsdictionary.com/dictionary/english/distributorship
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DISTRIBUTION SERVICES “apart from the mark as shown.
TMEP §§1213.03(c), 1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
How to respond. Click to file a response to this nonfinal Office action.
/C. Dionne Clyburn/
C. Dionne Clyburn
Trademark Examining Attorney
LO 110
571-272-9358
dionne.clyburn@uspto.gov
RESPONSE GUIDANCE