theNewerYork Trademark Declined

8/10/2019 theNewerYork Trademark Declined

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To: Raab, Joshua S. ([email protected])

Subject: U.S. TRADEMARK APPLICATION NO. 85748039 - THENEWERYORK -

N/A

Sent: 2/11/2013 9:13:03 AM

Sent As: [email protected]

Attachments: Attachment - 1

Attachment - 2

Attachment - 3

Attachment - 4

Attachment - 5

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANTS TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 85748039

MARK: THENEWERYORK

*85748039*

CORRESPONDENT ADDRESS:

RAAB, JOSHUA S.

2692 SYCAMORE CANYON RD

SANTA BARBARA, CA 93108-1914

CLICK HERE TO RESPOND TO

http://www.uspto.gov/trademarks/teas/r

APPLICANT: Raab, Joshua S.

CORRESPONDENTS REFERENCE/DOCKET NO :

N/A

CORRESPONDENT E-MAIL ADDRESS:

[email protected]
http://www.uspto.gov/trademarks/teas/response_forms.jsphttp://localhost/var/www/apps/conversion/tmp/OOA0006.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0005.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0004.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0003.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0002.JPGmailto:[email protected]


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OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANTS TRADEMARK APPLICATION, THE USPTOMUST RECEIVE APPLICANTS COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS

OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 2/11/2013

The referenced application has been reviewed by the assigned trademark examining attorney. Applicantmust 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.

Summary of Issues Raised

Section 2(d) Refusal Likelihood of ConfusionIdentification of GoodsResponse Guidelines

SECTION 2(d) REFUSAL LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks THENEW YORKER in U.S. Registration Nos. 844,606 and 2,746,797. Trademark Act Section 2(d), 15U.S.C. 1052(d); seeTMEP 1207.01 et seq. See the enclosed registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered markthat it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of thegoods of the applicant and registrant. See15 U.S.C. 1052(d). In the seminal decisionIn re E. I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factorsto be considered when determining whether there is a likelihood of confusion under Section 2(d). SeeTMEP 1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one ofthe factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. CapitalCity Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011);In re Majestic

Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont deNemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of


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the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);In re Dakins Miniatures Inc. , 59 USPQ2d 1593, 1595-96(TTAB 1999); TMEP 1207.01 et seq.

It is noteworthy that the cited registrations are owned by the same registrant, Advance MagazinePublishers, Inc.

Relatedness of the Goods

We first consider the relatedness of the parties goods.

When analyzing an applicants and registrants goods for similarity and relatedness, that determination isbased on the description of the goods stated in the application and registration at issue, not on extrinsicevidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).

Absent restrictions in an application and/or registration, the identified goods are presumed to travel in thesame channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);Hewlett-Packard Co. v. Packard Press Inc.,281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed

to encompass all goods of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB2006);In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

Here, applicant seeks to register its mark for use on M agazines in the field of fiction work in Class 16.Registrants goods are also both in Class 16: Weekly magazine in U.S. Reg. 844,606 and Generalfeature weekly magazine in U.S. Reg. 2,746,797.

It is clear that none of these identifications has any restriction as to nature, type, channels of trade, orclasses of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade,and are available to the same class of purchasers. Further, the registrations use broad wording to describethe subject matter and circulation of its magazines; this wording is presumed to encompass all goods ofthe type described, including those in applicants more narrow identification, magazines in the field offiction work.

Thus, the parties magazines are deemed closely related, if not identical, for purposes of this likelihood ofconfusion analysis.


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Similarity of the Marks

We next consider the marks themselves.

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercialimpression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quotingInre E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marksconfusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA

Realty Profls, Inc. , 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP 1207.01(b).

When comparing marks, the test is not whether the marks can be distinguished in a side-by-sidecomparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to thesource of the goods offered under applicants and registrants marks is likely to result. Midwestern PetFoods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir.2012);Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP 1207.01(b). Thefocus is on the recollection of the average purchaser, who normally retains a general rather than specificimpression of trademarks. LOreal S.A. v. Marcon , 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed AirCorp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP 1207.01(b).

Applicant has applied to register the mark theNewerYork (in standard characters). Registrants marks areTHE NEW YORKER (in stylized font) and THE NEW YORKER (in a typed drawing, i.e.,standardcharacters).

The marks are highly similar in that applicants mark theNewerYork is a play on registrants THE NEWYORKER, as applicants mark consists of a modified version of registrants marks. Confusion is likelybetween two marks consisting of various combinations of the same elements if they convey the samemeaning or create substantially similar commercial impressions. TMEP 1207.01(b)(vii); see, e.g., In reWine Socy of Am. Inc. , 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OFAMERICA and design, for wine club membership services including the supplying of printed materials,sale of wines to members, conducting wine tasting sessions and recommending specific restaurantsoffering wines sold by applicant, likely to be confused with AMERICAN WINE SOCIETY 1967 anddesign, for a newsletter, bulletin and journal of interest to members of the registrant);In re Nationwide

Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER, with RUST disclaimed, fora rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).

Here, applicants mark is highly similar to registrants marks. Applicant merely moved the ER toNEW from YORK which does not create a new meaning or new commercial impression. In fact, thecommercial impression of applicants mark is still that of New York, even with the modified spelling ofNew. Likewise, the commercial impression of registrants marks is also that of New York, even withthe modified spelling of York. As such, these commercial impressions are the same.


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To that end, case law has established that marks may be confusingly similar in appearance despite thedifference or substitution of letters. See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systemssoftware); Canadian Imperial Bank of Commerce, N.A., v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d1813 (Fed. Cir. 1987) (COMMCASH held likely to be confused with COMMUNICASH, both for banking

services);In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant heldlikely to be confused with TURCOOL for cutting oil);In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB1986) (MCKENZIES (stylized) for processed frozen fruits and vegetables held likely to be confusedwith McKenzie for canned fruits and vegetables);In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985)(NEWPORTS for womens shoes held likely to be confused with NEWPORT for outer shirts); In rePellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON for microprocessor used in commerciallaundry machines held likely to be confused with MILLTRONICS (stylized) for electronic control devicesfor machinery);In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL for resinous chemicals usedin dyeing textiles held likely to be confused with LUTEX for non-resinous chemicals used in the textileindustry).

Thus, the shifting of the letters ER between applicants theNewerYork mark and registrants THENEW YORKER mark is not sufficiently different to overcome the strong similarities between the marksin this case.

Lastly, the fact that applicants mark is in standard characters and registrants mark in U.S. Reg. 844,606is in stylized font is also not a meaningful distinction and does not serve to distinguish these marks.

Due to the fact that the goods are essentially identical and the marks are highly similar, confusion is

deemed likely in these instances. Accordingly, registration of applicants mark is refused underTrademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration Nos.844,606 and 2,746,797.

Opportunity to Respond

Although applicants mark has been refused registration, applicant may respond to the refusal bysubmitting evidence and arguments in support of registration.

If applicant chooses to respond to this Office action, applicant must respond to the requirement below.However, please note that simply satisfying the outstanding requirement below may not overcome therefusal issued above.


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IDENTIFICATION OF GOODS

As noted above, applicant seeks to register its mark for use on magazines in the field of fiction work.

The wording fiction work in the identification of goods is indefinite and must be clarified because theterm work, that is, precise nature of the goods, is unclear. SeeTMEP 1402.01. Applicant maysubstitute the following wording, if accurate: magazines featuring works of fiction in the nature ofshort stories, novellas, and articles.

Scope of Identification Advisory

An applicant may amend an identification of services only to clarify or limit the services; adding to orbroadening the scope of the services is not permitted. 37 C.F.R. 2.71(a); seeTMEP 1402.06 et seq.,1402.07 et seq.

For assistance with identifying and classifying goods in trademark applications, please see the USPTOsonline searchable U.S. Acceptable Identification of Goods and Services Manualathttp://tess2.uspto.gov/netahtml/tidm.html. SeeTMEP 1402.04.

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address each refusal and/orrequirement raised in this Office action. Since the action includes a refusal, applicant may providearguments and/or evidence as to why the refusal should be withdrawn and the mark should register.Applicant may also have other options for responding to a refusal and should consider such optionscarefully. To respond to requirements and certain refusal response options, applicant should set forth inwriting the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or respondsby expressly abandoning the application, the application process will end, the trademark will fail toregister, and the application fee will not be refunded. See15 U.S.C. 1062(b); 37 C.F.R. 2.65(a),2.68(a), 2.209(a); TMEP 405.04, 718.01, 718.02. Where the application has been abandoned for failureto respond to an Office action, applicants only option would be to file a timely petition to revive theapplication, which, if granted, would allow the application to return to live status. See37 C.F.R. 2.66;TMEP 1714. There is a $100 fee for such petitions. See37 C.F.R. 2.6, 2.66(b)(1).
http://tess2.uspto.gov/netahtml/tidm.html


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TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMITFEE: Applicants who filed their application online using the reduced-fee TEAS Plus application mustcontinue to submit certain documents online using TEAS, including responses to Office actions. See37C.F.R. 2.23(a)(1). For a complete list of these documents, see TMEP 819.02(b). In addition, suchapplicants must accept correspondence from the Office via e-mail throughout the examination process andmust maintain a valid e-mail address. 37 C.F.R. 2.23(a)(2); TMEP 819, 819.02(a). TEAS Plusapplicants who do not meet these requirements must submit an additional fee of $50 per international classof goods and/or services. 37 C.F.R. 2.6(a)(1)(iv); TMEP 819.04. In appropriate situations and whereall issues can be resolved by amendment, responding by telephone to authorize an examiners amendmentwill not incur this additional fee.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark

examining attorney.

/amyckelly/

U.S. Patent and Trademark Office

Attorney Advisor - Trademarks

Law Office 113

(571) 272 4492

[email protected]

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Pleasewait 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 technicalassistance with onlineforms, e-mail [email protected]. For questions about the Office action itself, please contact the assigned

trademark examining attorney. E-mail communications will not be accepted as responses to Officeactions; 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 orsomeone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all jointapplicants). If an applicant is represented by an attorney, the attorney must sign the response.
mailto:[email protected]://www.uspto.gov/trademarks/teas/response_forms.jsp


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PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant doesnot miss crucial deadlines or official notices, check the status of the application every three to four monthsusing the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep

a copy of the TSDR status screen. If the status shows no change for more than six months, contact theTrademark Assistance Center by e-mail at [email protected] call 1-800-786-

9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form athttp://www.uspto.gov/trademarks/teas/correspondence.jsp.
http://www.uspto.gov/trademarks/teas/correspondence.jsphttp://www.uspto.gov/trademarks/process/status/mailto:[email protected]://tsdr.uspto.gov/


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To: Raab, Joshua S. ([email protected])

Subject: U.S. TRADEMARK APPLICATION NO. 85748039 - THENEWERYORK -

N/A

Sent: 2/11/2013 9:13:04 AM

Sent As: [email protected]

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOURU.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/11/2013FOR U.S. APPLICATION SERIAL NO. 85748039

Your trademark application has been reviewed. The trademark examining attorney assigned by theUSPTO to your application has written an official letter to which you must respond. Please follow thesesteps:

(1) READ THE LETTER by clicking on this linkor going to http://tsdr.uspto.gov/, entering your U.S.

application serial number, and clicking on Documents.

The Office action may not be immediately viewable, to allow for necessary system updates of the

application, but will be available within 24 hours of this e-mail notification.

(2) RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from2/11/2013, using the Trademark Electronic Application System (TEAS) response form located athttp://www.uspto.gov/trademarks/teas/response_forms.jsp .

Do NOT hit Reply to this e-mail notification, or otherwise e-mail your response because the
http://www.uspto.gov/trademarks/teas/response_forms.jsphttp://tsdr.uspto.gov/http://tdr.uspto.gov/view.action?sn=85748039&type=OOA&date=20130211#tdrlinkmailto:[email protected]


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USPTO does NOT accept e-mails as responses to Office actions.

(3) QUESTIONS about the contents of the Office action itself should be directed to the trademarkexamining attorney who reviewed your application, identified below.

/amyckelly/

U.S. Patent and Trademark Office

Attorney Advisor - Trademarks

Law Office 113

(571) 272 4492

[email protected]

WARNING

Failure to file the required response by the applicable response deadline will result in theABANDONMENT of your application. For more information regarding abandonment, seehttp://www.uspto.gov/trademarks/basics/abandon.jsp .

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Privatecompaniesnot associated with the USPTO are using information provided in trademark applications tomail or e-mail trademark-related solicitations. These companies often use names that closely resemble theUSPTO and their solicitations may look like an official government document. Many solicitations requirethat you pay fees.

Please carefully review all correspondence you receive regarding this application to make sure that youare responding to an official document from the USPTO rather than a private company solicitation. Allofficial USPTO correspondence will be mailed only from the United States Patent and Trademark

Office in Alexandria, VA; or sent by e-mail from the domain @uspto.gov. For more information on

how to handle private company solicitations, seehttp://www.uspto.gov/trademarks/solicitation_warnings.jsp.
http://www.uspto.gov/trademarks/solicitation_warnings.jsphttp://www.uspto.gov/trademarks/basics/abandon.jsp

theNewerYork Trademark Declined

Documents

Transcript of theNewerYork Trademark Declined