United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90156517
Mark: ENCORE
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Correspondence Address:
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Applicant: Encore App, 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: January 21, 2021
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. 3828920, 4593073, 4714566. 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.
COMPARISON OF MARKS
Applicant’s mark is “ENCORE” in standard characters in International Classes 35 and 42.
Registrants’ marks are:
U.S. Registration No. 3828920, “ENCORE” in stylized lettering in International Classes 35, 41, 43, and 44.
U.S. Registration No. 4593073, “ENCORE” in standard characters in International Class 35.
U.S. Registration No. 4714566, “SHAZAM ENCORE” in standard characters in International Classes 9, 41, and 42.
U.S. Registration Nos. 3828920 and 4593073 are owned by the same registrant.
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).
In this case, applicant’s mark and the registrants’ marks are highly similar in sound, appearance and overall commercial connotation. The marks contain the identical dominant term “ENCORE”. 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).
The stylized font in U.S. Registration No. 3828920, does not obviate the similarity because the applied-for mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
The additional wording “SHAZAM” in U.S. Registration No. 4714566, does not obviate the similarity because the applied-for mark is entirely incorporated in registrant’s mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, 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.
As a result, the marks are confusingly similar.
COMPARISON OF GOODS AND SERVICES
The applicant’s services are identified as “Operating on-line marketplaces featuring music” in International Class 35 and “Providing a website allowing users to download music and music videos” in International Class 42.
The registrant’s relevant services are identified as “Retail store services featuring a wide variety of consumer goods of others” in International Class 35.
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
In this case, the registrations use broad wording to describe retail store featuring “a wide variety of consumer goods,” which presumably encompasses all services of the type described, including applicant’s more narrow identification of “marketplaces featuring music.” 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 registrant’s goods and services are identified as “software providing music or information internet links; software providing music or information internet links in response to specified audio content; software providing a viewer of radio, television or streaming programmes, [ cinematic films ] or other audio/visual entertainment content, upon request, with internet links to relevant goods, services or information including, audio or information content, retail services providers [ and offers or competitions; ] software providing, in response to specified audio/visual content, a viewer of radio, television or streaming programmes, [ cinematic films ] or other audio/visual entertainment content with internet links to relevant goods, services or information including, audio or information content, retail services providers [ and offers or competitions; ] software enabling a viewer of audio/visual entertainment to access interactive audio entertainment or information content; software enabling a viewer of audio/visual or media content to access music or information; software enabling a viewer of audio/visual or media content to access retail services providers; software enabling a viewer of radio, television or streaming programmes, cinematic films or other audio/visual entertainment or information content to access, online or via mobile phone, interactive audio or information content, offers or competitions and/or retail services providers; [ software enabling a viewer of DVDs, or other optical media, to access interactive audio or information content; ] software enabling a viewer of [ films or ] radio, television or streaming programmes or other audio to access interactive audio or information content; software for recognition of audio/visual content; software for identification of audio/visual content; software which recognizes specified audio/visual entertainment content and, in response, provides access to interactive audio entertainment or information content; software which recognizes specified audio/visual content and, in response, provide access to music or information and/or retail services providers [ and/or offers or competitions ] ; software for music recognition; [ software for recognition of images; ] software for music identification; software for accessing information relating to music and audio/visual recordings; software for searching information from a global computer network or the Internet; databases of recorded music files, downloadable and recorded on computer media; databases of recorded music, downloadable and recorded on computer media; downloadable electronic wallpaper, graphics, music computer games, ring tones via the Internet and wireless devices” in International Class 9, “Provision of information relating to audio content; provision of information relating to music via telephone or mobile phone or via the Internet; provision of information relating to music and music related information via telephone or mobile phone where said music is relayed to the information provider via telephone or mobile phone; information and advisory services relating to each of the aforesaid services” in International Class 41, and “[ Providing temporary use of online, non-downloadable software that provides audio content recognition services; providing temporary use of online non-downloadable software that provides audio content identification services; Providing temporary use of online, non-downloadable software that provides music recognition services; Providing temporary use of online, non-downloadable software that provides music identification services; Providing temporary use of online, non-downloadable software that recognizes specified audio entertainment content and, in response, provides access to interactive audio or information content; Providing temporary use of online, non-downloadable software that recognizes specified audio content and, in response, ] provides access to offers [ or competitions ] and/or retail services providers; information and advisory services relating to each of the aforesaid services” in International Class 42.
In this case, the registration’s International Class 9 goods use broad wording to describe its goods, such as “software providing music or information internet links” and “downloadable and recorded on computer media.” When the cited registrant’s software is identified broadly without restriction or limitation as to the purpose or function, the software is presumed to encompass all goods of that type, including the same type of software as applicant. See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1207.01(a)(iii).
Thus, applicant’s and registrant’s goods and 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).
SUMMARY
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In summary, the applicant’s and registrants’ marks create the same commercial impression and the respective goods and services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods and/or services originate from a common source.
Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
PRIOR-FILED APPLICATIONS—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 marks in the referenced applications. 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.
INFORMATION REGARDING COMMUNICATIONS WITH TRADEMARK OFFICE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusals in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
GUIDANCE ON RESPONDING TO OFFICE ACTION
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.
Attorney 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.
How to respond. Click to file a response to this nonfinal Office action.
Jaime Batt
/Jaime Batt/
USPTO Trademark Examining Attorney
Law Office 125
(571)-272-1125
jaime.batt@uspto.gov
RESPONSE GUIDANCE