Transcription

PTO Form 1930 (Rev 9/2007)OMB No. 0651-0050 (Exp. 05/31/2014)Request for Reconsideration after Final ActionThe table below presents the data as entered.Input FieldEnteredSERIAL NUMBER85484758LAW OFFICEASSIGNEDLAW OFFICE 111MARK SECTION (no change)ARGUMENT(S)IN THE UNITED STATES PATENT & TRADEMARK OFFICEIn re Application of:::::::::Time Warner Inc.Serial No.: 85/484758Filed: December 1, 2011Mark: TWC TVExaminer: Tracy Whittaker-BrownLaw Office: 111REQUEST FOR RECONSIDERATIONThis Request For Reconsideration is in response to the Final Office Action dated June 3, 2013. In theOffice Action the PTO refused registration of the mark TWC TV based upon an alleged conflict withReg. No. 1925906, for the mark TWC (the “Cited Registration”), even though the PTO already hasdetermined on seven occasions that there is no likelihood of confusion between Applicant’s TWCmarks and the Cited Registration.As an initial matter the Office Action erroneously claims that the Cited Registration is owned by TimeWarner Cable Inc. when, in fact, it is owned by The Weather Channel LLC (‘the Weather Channel”), acompany that, as set forth in more detail below, already coexists peacefully in the marketplace and onthe PTO register with Applicant and its TWC trademark. Moreover, The Weather Channel has not

objected to Applicant’s applications for and registrations of eight other TWC-based trademarks,including three identical TWC TV marks. Indeed, The Weather Channel has consented to TimeWarner’s registration of the mark at issue in Serial No. 85/484758, as amended and set forth in moredetail below.I.The PTO Has Already Determined There Is No Likelihood Of Confusion.The Cited Registration No. 1925906 for the mark TWC is owned by The Weather Channel. Theservices covered under that registration are very specific, i.e., they are limited to televisionprogramming and broadcasting related solely to “weather, meteorology, or climatology.” Moreover, asthe PTO records show, registration No. 1925906 was divided, creating incontestable Child Registration4072265 for services not primarily related to weather, meteorology or climatology. And as Applicantdeclares below, that Child Registration is owned by Time Warner Inc. Attached as Exhibit A are copiesof documents filed with the PTO showing Applicant’s ownership of the mark.The current coexistence of these incontestable federal registrations for the trademark TWCdemonstrates that the respective trademark owners – The Weather Channel and Time Warner Inc. –have determined that consumers are not likely to be confused or misled by the concurrent use andregistration of the trademark. As detailed below, the PTO has since approved seven more TWC-basedapplications filed by Applicant, all of which have matured into registrations without opposition fromThe Weather Channel.For purposes of this Office Action Response, it should be emphasized that the trademarkscovered under Reg. No. 1925906 (owned by The Weather Channel) and Reg. No. 4072265 (owned byApplicant) are identical, i.e., they cover the same word mark TWC. Clearly then, as the owner of anincontestable federal registration for the trademark TWC – which is identical to the Cited Registration Applicant should be entitled to register the different mark TWC TV. Moreover, the services coveredunder Applicant’s current application are the same as, related to or a natural extension of those coveredunder Applicant’s existing incontestable Reg. No. 4072265 for the mark TWC.In addition to owning a federal registration for the identical TWC trademark cited against thepresent application, Applicant owns seven registrations for TWC-based marks, including three TWC TVmarks that are identical to the mark at issue in this office action. Specifically, Applicant owns thefollowing TWC-based trademarks:MARKReg. No.Goods/Services

TWC TV4400806TWC TV4400805TWC TV4400807MY TWC4400802TWC WIFI4400974MY TWC4400804MY TWC4400803Telecommunication services, namely, local and long distancetransmission of data and digital media content by means of cable andsatellite, all delivered over cable networks; video-on-demand cabletelevision transmission, programming and broadcasting services;cable television transmission services, namely, transmission andstorage of digital video recordings; broadband communicationsservices, namely, analog and digital cable television transmissionservices, transmission of interactive television programs andtransmission of high-definition television programs, in Class 38Downloadable television programs featuring news, comedy,drama, action, adventure and/or animation, delivered via atelecommunications network using broadband devices and wirelessdevices; home and network based digital video recorders; cabletelevision converters; remote controls for televisions; cablemodems; computer hardware and software programs for recording,receiving, processing, transmitting and displaying of video, in Class9Computer services, namely, providing a web-based system andonline portal for consumers to remotely manage, administer, modifyand control their digital video recorders and dvr cable boxes; on-linesystem management services that allow users to remotely view,monitor, program, operate and control their digital video recordersand dvr cable boxes, in Class 42Downloadable television programs featuring news, comedy,drama, action, adventure and/or animation, delivered via atelecommunications network using broadband devices and wirelessdevices; home and network based digital video recorders; cabletelevision converters; remote controls for televisions; cablemodems; computer hardware and software programs for recording,receiving, processing, transmitting and displaying of video, in Class9Providing Internet access; providing multiple user wireless access tothe Internet, in Class 38Computer services, namely, providing a web-based system andonline portal for consumers to remotely manage, administer, modifyand control their digital video recorders and dvr cable boxes; on-linesystem management services that allow users to remotely view,monitor, program, operate and control their digital video recordersand dvr cable boxes, in Class 42Telephone voice messaging services; voice over internet protocoltelephony services; web messaging; providing communicationsconnections and high speed access to area networks and a globalcomputer information network; telecommunication services, namely,local and long distance transmission of voice, data and digital mediacontent by means of telephone, cable and satellite; wirelesscommunications services, namely, text and numeric wireless digitalmessaging services, wireless broadband communications services,wireless electronic transmission of voice signals, data, facsimiles,images and information, wireless mobile telephone services and

wireless voice mail services, all delivered over cable networks;video-on-demand cable television transmission, programmingand broadcasting services; cable television transmission services,namely, transmission and storage of digital video recordings;broadband communications services, namely, analog and digitalcable television transmission services, transmission of interactivetelevision programs and transmission of high-definitiontelevision programs, in Class 38Attached as Exhibit B are copies of printouts from the PTO’s Trademark Electronic SearchSystem. These registrations serve as prima facie evidence of Applicant’s ownership of the TWCtrademarks and the validity of those marks. 15 USC § 1057.The foregoing demonstrates that Applicant already owns eight federal trademark registrations onthe Principal Register for TWC, TWC TV and other TWC-based marks. Many of these registrationscover television and telecommunications services, news, and related goods and services of the sorthighlighted in by the PTO in its Office Action in support of the unfounded position that there is alikelihood of confusion with the Cited Registration.It is important to emphasize that Applicant already owns three federal registrations for theidentical mark at issue in this application (TWC TV) covering a wide range of television-based goodsand services, including news-related television services. The PTO approved those applications and theowner of the Cited Registration did not file oppositions.After having already approved – seven times - registration of the same and similar TWCtrademarks for the same and related goods and services it would be capricious, arbitrary, inconsistentand inequitable for the PTO to now refuse registration of the mark TWC TV covered under Serial No.85/484758. This is particularly true when, as set forth below, The Weather Channel has given itsconsent to Time Warner’s registration and use of the mark TWC TV, as amended. Given that the PTOalready has determined on several occasions the marks are not confusingly similar, Applicant requeststhe PTO to maintain its consistent position on this matter and approve the application for publication.II.The Weather Channel Consents To The Registration With Amended Services.The Weather Channel has granted its consent to Time Warner’s registration of the mark TWCTV if Time Warner amends the recitation of services to expressly exclude services primarily related toweather, meteorology or climatology. Time Warner hereby amends its recitation of services, as follows:Television on demand in the nature of the provision of television programs via video-on-

demand services, television programming services; entertainment services in the nature of acontinuous running cable television program specializing in news, current events andinformation on topics of general interest; providing a website featuring current event news andinformation; video recording services for others; entertainment services, namely, providingtutorials on digital and interactive cable services to digital cable subscribers featuring on-screenhelp guides to illustrate key digital cable features; none of the aforementioned services being inthe field of gaming or being primarily related to weather, meteorology or climatology.III.Conclusion.Given that(i)Applicant already owns eight federal trademark registrations for TWC-basedmarks, including a registration for TWC that is identical to the Cited Registration, andthree registrations for TWC TV marks that are identical to the mark covered underapplication Serial No. 85/484758;(ii)The Weather Channel consents to Time Warner’s registration of the mark TWCTV if the recitation of services expressly exclude those primarily related to weather,meteorology or climatology; and(iii)Time Warner amends its application in accordance with The Weather Channel’srequest;Applicant respectfully submits that there is no likelihood of confusion and Applicant’s markshould be approved for publication.Time Warner Inc.Dated:ByJames R. Davis, IIArent Fox LLP1717 K Street, NWWashington, DC 20036Attorney for ApplicantEVIDENCE SECTIONEVIDENCE FILE NAME(S)ORIGINALPDF 137122-85484758001 001/evi 20447535-143811593 . exhibits.pdfCONVERTEDPDF 8\xml9\RFR0002.JPG

(25 758\xml9\RFR0026.JPGDESCRIPTION OFEVIDENCE FILEExhibit A and Exhibit BGOODS AND/OR SERVICES SECTION (current)INTERNATIONALCLASSDESCRIPTION041

Television on demand in the nature of the provision of television programs via video-on-demandservices, television programming services; entertainment services in the nature of a continuous runningcable television program specializing in news, current events and information on topics of generalinterest; providing a website featuring current event news and information; video recording services forothers; entertainment services, namely, providing tutorials on digital and interactive cable services todigital cable subscribers featuring on-screen help guides to illustrate key digital cable features; none ofthe aforementioned services being in the field of gamingFILING BASISSection 1(b)GOODS AND/OR SERVICES SECTION (proposed)INTERNATIONALCLASS041TRACKED TEXT DESCRIPTIONTelevision on demand in the nature of the provision of television programs via video-on-demandservices, television programming services; entertainment services in the nature of a continuous runningcable television program specializing in news, current events and information on topics of generalinterest; providing a website featuring current event news and information; video recording services forothers; entertainment services, namely, providing tutorials on digital and interactive cable services todigital cable subscribers featuring on-screen help guides to illustrate key digital cable features; none ofthe aforementioned services being in the field of gaming; none of the aforementioned services being inthe field of gaming or being primarily related to weather, meteorology or climatology.FINAL DESCRIPTIONTelevision on demand in the nature of the provision of television programs via video-on-demandservices, television programming services; entertainment services in the nature of a continuous runningcable television program specializing in news, current events and information on topics of generalinterest; providing a website featuring current event news and information; video recording services forothers; entertainment services, namely, providing tutorials on digital and interactive cable services todigital cable subscribers featuring on-screen help guides to illustrate key digital cable features; none ofthe aforementioned services being in the field of gaming or being primarily related to weather,meteorology or climatology.FILING BASISSection 1(b)SIGNATURE SECTIONRESPONSE SIGNATURE/Jim Davis/SIGNATORY'S NAMEJames R. Davis, IISIGNATORY'SPOSITIONAttorney for Applicant, DC bar memberSIGNATORY'S PHONENUMBER202-857-6000DATE SIGNED12/03/2013AUTHORIZEDSIGNATORYYESCONCURRENT APPEALYES

NOTICE FILEDFILING INFORMATION SECTIONSUBMIT DATETue Dec 03 15:05:42 EST 2013TEAS TO Form 1930 (Rev 9/2007)OMB No. 0651-0050 (Exp. 05/31/2014)Request for Reconsideration after Final ActionTo the Commissioner for Trademarks:Application serial no. 85484758 has been amended as follows:ARGUMENT(S)In response to the substantive refusal(s), please note the following:IN THE UNITED STATES PATENT & TRADEMARK OFFICEIn re Application ofTime Warner Inc.Serial No.: 85/484758Filed: December 1, 2011Mark: TWC TV:::::::::Examiner: Tracy Whittaker-BrownLaw Office: 111REQUEST FOR RECONSIDERATIONThis Request For Reconsideration is in response to the Final Office Action dated June 3, 2013. In theOffice Action the PTO refused registration of the mark TWC TV based upon an alleged conflict with Reg.No. 1925906, for the mark TWC (the “Cited Registration”), even though the PTO already has determinedon seven occasions that there is no likelihood of confusion between Applicant’s TWC marks and the

Cited Registration.As an initial matter the Office Action erroneously claims that the Cited Registration is owned by TimeWarner Cable Inc. when, in fact, it is owned by The Weather Channel LLC (‘the Weather Channel”), acompany that, as set forth in more detail below, already coexists peacefully in the marketplace and on thePTO register with Applicant and its TWC trademark. Moreover, The Weather Channel has not objected toApplicant’s applications for and registrations of eight other TWC-based trademarks, including threeidentical TWC TV marks. Indeed, The Weather Channel has consented to Time Warner’s registration ofthe mark at issue in Serial No. 85/484758, as amended and set forth in more detail below.I.The PTO Has Already Determined There Is No Likelihood Of Confusion.The Cited Registration No. 1925906 for the mark TWC is owned by The Weather Channel. Theservices covered under that registration are very specific, i.e., they are limited to television programmingand broadcasting related solely to “weather, meteorology, or climatology.” Moreover, as the PTOrecords show, registration No. 1925906 was divided, creating incontestable Child Registration 4072265for services not primarily related to weather, meteorology or climatology. And as Applicant declaresbelow, that Child Registration is owned by Time Warner Inc. Attached as Exhibit A are copies ofdocuments filed with the PTO showing Applicant’s ownership of the mark.The current coexistence of these incontestable federal registrations for the trademark TWCdemonstrates that the respective trademark owners – The Weather Channel and Time Warner Inc. – havedetermined that consumers are not likely to be confused or misled by the concurrent use and registrationof the trademark. As detailed below, the PTO has since approved seven more TWC-based applicationsfiled by Applicant, all of which have matured into registrations without opposition from The WeatherChannel.For purposes of this Office Action Response, it should be emphasized that the trademarks coveredunder Reg. No. 1925906 (owned by The Weather Channel) and Reg. No. 4072265 (owned by Applicant)are identical, i.e., they cover the same word mark TWC. Clearly then, as the owner of an incontestablefederal registration for the trademark TWC – which is identical to the Cited Registration - Applicantshould be entitled to register the different mark TWC TV. Moreover, the services covered underApplicant’s current application are the same as, related to or a natural extension of those covered underApplicant’s existing incontestable Reg. No. 4072265 for the mark TWC.In addition to owning a federal registration for the identical TWC trademark cited against the

present application, Applicant owns seven registrations for TWC-based marks, including three TWC TVmarks that are identical to the mark at issue in this office action. Specifically, Applicant owns thefollowing TWC-based trademarks:MARKReg. No.Goods/ServicesTWC TV4400806TWC TV4400805TWC TV4400807MY TWC4400802TWC WIFI4400974MY TWC4400804MY TWC4400803Telecommunication services, namely, local and long distancetransmission of data and digital media content by means of cable andsatellite, all delivered over cable networks; video-on-demand cabletelevision transmission, programming and broadcasting services;cable television transmission services, namely, transmission andstorage of digital video recordings; broadband communicationsservices, namely, analog and digital cable television transmissionservices, transmission of interactive television programs andtransmission of high-definition television programs, in Class 38Downloadable television programs featuring news, comedy,drama, action, adventure and/or animation, delivered via atelecommunications network using broadband devices and wirelessdevices; home and network based digital video recorders; cabletelevision converters; remote controls for televisions; cablemodems; computer hardware and software programs for recording,receiving, processing, transmitting and displaying of video, in Class9Computer services, namely, providing a web-based system andonline portal for consumers to remotely manage, administer, modifyand control their digital video recorders and dvr cable boxes; on-linesystem management services that allow users to remotely view,monitor, program, operate and control their digital video recordersand dvr cable boxes, in Class 42Downloadable television programs featuring news, comedy,drama, action, adventure and/or animation, delivered via atelecommunications network using broadband devices and wirelessdevices; home and network based digital video recorders; cabletelevision converters; remote controls for televisions; cablemodems; computer hardware and software programs for recording,receiving, processing, transmitting and displaying of video, in Class9Providing Internet access; providing multiple user wireless access tothe Internet, in Class 38Computer services, namely, providing a web-based system andonline portal for consumers to remotely manage, administer, modifyand control their digital video recorders and dvr cable boxes; on-linesystem management services that allow users to remotely view,monitor, program, operate and control their digital video recordersand dvr cable boxes, in Class 42Telephone voice messaging services; voice over internet protocoltelephony services; web messaging; providing communicationsconnections and high speed access to area networks and a global

computer information network; telecommunication services, namely,local and long distance transmission of voice, data and digital mediacontent by means of telephone, cable and satellite; wirelesscommunications services, namely, text and numeric wireless digitalmessaging services, wireless broadband communications services,wireless electronic transmission of voice signals, data, facsimiles,images and information, wireless mobile telephone services andwireless voice mail services, all delivered over cable networks;video-on-demand cable television transmission, programmingand broadcasting services; cable television transmission services,namely, transmission and storage of digital video recordings;broadband communications services, namely, analog and digitalcable television transmission services, transmission of interactivetelevision programs and transmission of high-definitiontelevision programs, in Class 38Attached as Exhibit B are copies of printouts from the PTO’s Trademark Electronic SearchSystem. These registrations serve as prima facie evidence of Applicant’s ownership of the TWCtrademarks and the validity of those marks. 15 USC § 1057.The foregoing demonstrates that Applicant already owns eight federal trademark registrations onthe Principal Register for TWC, TWC TV and other TWC-based marks. Many of these registrations covertelevision and telecommunications services, news, and related goods and services of the sort highlighted inby the PTO in its Office Action in support of the unfounded position that there is a likelihood of confusionwith the Cited Registration.It is important to emphasize that Applicant already owns three federal registrations for the identicalmark at issue in this application (TWC TV) covering a wide range of television-based goods and services,including news-related television services. The PTO approved those applications and the owner of theCited Registration did not file oppositions.After having already approved – seven times - registration of the same and similar TWCtrademarks for the same and related goods and services it would be capricious, arbitrary, inconsistent andinequitable for the PTO to now refuse registration of the mark TWC TV covered under Serial No.85/484758. This is particularly true when, as set forth below, The Weather Channel has given its consentto Time Warner’s registration and use of the mark TWC TV, as amended. Given that the PTO alreadyhas determined on several occasions the marks are not confusingly similar, Applicant requests the PTO tomaintain its consistent position on this matter and approve the application for publication.II.The Weather Channel Consents To The Registration With Amended Services.

The Weather Channel has granted its consent to Time Warner’s registration of the mark TWC TVif Time Warner amends the recitation of services to expressly exclude services primarily related toweather, meteorology or climatology. Time Warner hereby amends its recitation of services, as follows:Television on demand in the nature of the provision of television programs via video-ondemand services, television programming services; entertainment services in the nature of acontinuous running cable television program specializing in news, current events and informationon topics of general interest; providing a website featuring current event news and information;video recording services for others; entertainment services, namely, providing tutorials on digitaland interactive cable services to digital cable subscribers featuring on-screen help guides toillustrate key digital cable features; none of the aforementioned services being in the field ofgaming or being primarily related to weather, meteorology or climatology.III.Conclusion.Given that(i)Applicant already owns eight federal trademark registrations for TWC-basedmarks, including a registration for TWC that is identical to the Cited Registration, andthree registrations for TWC TV marks that are identical to the mark covered underapplication Serial No. 85/484758;(ii)The Weather Channel consents to Time Warner’s registration of the mark TWCTV if the recitation of services expressly exclude those primarily related to weather,meteorology or climatology; and(iii)Time Warner amends its application in accordance with The Weather Channel’srequest;Applicant respectfully submits that there is no likelihood of confusion and Applicant’s markshould be approved for publication.Time Warner Inc.Dated:Arent Fox LLP1717 K Street, NWWashington, DC 20036Attorney for ApplicantByJames R. Davis, II

EVIDENCEEvidence in the nature of Exhibit A and Exhibit B has been attached.Original PDF 2137122-85484758-001 001/evi 20447535143811593 . exhibits.pdfConverted PDF file(s) (25 Evidence-24Evidence-25CLASSIFICATION AND LISTING OF GOODS/SERVICESApplicant proposes to amend the following class of goods/services in the application:Current: Class 041 for Television on demand in the nature of the provision of television programs viavideo-on-demand services, television programming services; entertainment services in the nature of acontinuous running cable television program specializing in news, current events and information ontopics of general interest; providing a website featuring current event news and information; videorecording services for others; entertainment services, namely, providing tutorials on digital and interactivecable services to digital cable subscribers featuring on-screen help guides to illustrate key digital cablefeatures; none of the aforementioned services being in the field of gamingOriginal Filing Basis:Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or usethrough the applicant's related company or licensee the mark in commerce on or in connection with theidentified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).Proposed:Tracked Text Description: Television on demand in the nature of the provision of television programs

via video-on-demand services, television programming services; entertainment services in the nature of acontinuous running cable television program specializing in news, current events and information ontopics of general interest; providing a website featuring current event news and information; videorecording services for others; entertainment services, namely, providing tutorials on digital and interactivecable services to digital cable subscribers featuring on-screen help guides to illustrate key digital cablefeatures; none of the aforementioned services being in the field of gaming; none of the aforementionedservices being in the field of gaming or being primarily related to weather, meteorology or climatology.Class 041 for Television on demand in the nature of the provision of television programs via video-ondemand services, television programming services; entertainment services in the nature of a continuousrunning cable television program specializing in news, current events and information on topics of generalinterest; providing a website featuring current event news and information; video recording services forothers; entertainment services, namely, providing tutorials on digital and interactive cable services todigital cable subscribers featuring on-screen help guides to illustrate key digital cable features; none of theaforementioned services being in the field of gaming or being primarily related to weather, meteorology orclimatology.Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use throughthe applicant's related company or licensee the mark in commerce on or in connection with the identifiedgoods and/or services as o

TWC WIFI 4400974 Providing Internet access; providing multiple user wireless access to the Internet, in Class 38 MY TWC 4400804 Computer services, namely, providing a web-based system and online portal for consumers to remotely manage, administer, modify and control their digital video recorders and dvr cable boxes; on-line