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Jose Rojas (Bar No. ct22569) THE ROJAS LAW FIRM 40 Russ Street Hartford, Ct 06106-1520 Telephone: 860-232-3476 Fax: 888-418-2037 Email: rojas@therojaslawfirm.com Attorneys for Plaintiffs

UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT HARTFORD DIVISION

PAUL LIS

)

CIVIL ACTION NO.

DJ PAULIE BROADCASTING LLC

)

Plaintiffs

)

vs.

)

)

PAUL DELVECCHIO, JR

)

)

and

)

)

495 PRODUCTIONS

)

June 30, 2011

)

and

)

)

VIACOM, INC

)

COMPLAINT FOR TRADEMARK

Dba MTV Networks

)

INFRINGEMENT

)

and

)

)

UMG RECORDINGS, INC.

)

INJUNCTIVE RELIEF

)

and

)

)

FIESTA PALMS LLC

)

AND OTHER RELIEF

Dba Palms Casino Resort

)

)

and

)

)

(Jury Demand Endorsed Hereon)

BASKIN-ROBBINS, INC.

)

)

and

)

)

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-

HEARST COMMUNICATIONS, INC. )

 

)

and

)

)

ROOM960 LLC

)

)

and

)

)

JOHN DOE(S) 1-999

)

)

 

Defendants

)

Plaintiffs, Paul Lis and DJ Paulie Broadcasting, LLC, for their Complaint against

Defendants states the following: Allegations made are premised on the belief that the same

are

likely

to

have

evidentiary

support

after

a

reasonable

investigation and discovery, and allege as follows:

NATURE OF THE ACTION

opportunity

for

further

1. This action arises under the Trademark Laws of the United States, 15 U.S.C.

§§1051 et seq., and seeks preliminary and permanent injunctive relief, and attorneys’ fees

based upon the defendants’ i) trademark infringement in violation of §43 of the Lanham

Act, 15 U.S.C. §1125; and ii) federal unfair competition and false designation of origin in

violation of §43 of the Lanham Act, 15 U.S.C. §1125(a); and iii) Connecticut state

trademark infringement, unfair competition and injury to business reputation in violation

of Connecticut common law.

PARTIES

2. Plaintiff, PAUL LIS, is a citizen and resident of Farmington, Connecticut, with a

place of business of at 1430 Ellington Road, South Windsor, CT 06457, hereinafter

referred to as “DJ Paulie”.

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3. Plaintiff,

DJ

PAULIE

BROADCASTING,

LLC,

(Hereinafter,

“DJ

Paulie

Broadcasting”) is a Connecticut limited liability company with its principal place of

business at 1430 Ellington Road, South Windsor, CT, formerly at 83 Songbird Lane,

Farmington, CT 06032.

4. Defendant, PAUL DELVECCHIO, JR., is a citizen and resident of Rhode Island.

Defendant has done and is doing business within the state of Connecticut.

5. Defendant, 495 PRODUCTIONS, INC. (hereinafter, “495 Productions”), is a

California corporation whose principal office or place of business is 4222 West Burbank

Boulevard, Second Floor, Burbank, CA 91505.

6. Defendant, VIACOM INTERNATIONAL (hereinafter, “Viacom), is a Delaware

corporation whose principal office or place of business is 1515 Broadway, New York, New

York 10036.

7. Defendant, UMG RECORDINGS, INC. (hereinafter, “UMG”) is a Delaware

corporation with its principal office or place of business located at 2220 Colorado

Boulevard, Santa Monica, CA 90404.

8. Defendant, FIESTA PALMS, LLC, dba Palms Casino Resort, and Palms Casino

and Resort, (hereinafter, “Palms Casino”), is a Nevada Limited Liability company whose

principal office or place of business is 4321 West Flamingo Road, Las Vegas, Nevada

89101.

9.

Defendant,

BASKIN-ROBBINS,

INC.,

(hereinafter,

“Baskin-Robbins”)

is

a

Delaware corporation whose principal office or place of business is 130 Royall Street,

Canton, MA 02021.

10. Defendant, HEARST COMMUNICATIONS, INC., (hereinafter, “Hearst”) is a

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Delaware corporation whose principal office or place of business is 300 West 57 th Street,

38 th Floor, New York, New York 10019, and is the record owner of the brand, print

publication and website, COSMOPOLITAN, along with U.S. Trademark Registration No.

3,761,242 and others.

11. Defendant, ROOM 960, LLC, (hereinafter, “Room 960”) is a Connecticut limited

liability company whose principal office or place of business is 960 Main Street, Hartford,

CT 06103. Defendant is qualified and doing business in the State of Connecticut.

12. Defendant(s), John Does(s) 1-999, are persons or entities whose identities and

citizenship are currently unknown to Plaintiff, who are liable to the plaintiff for trademark

infringement and other related civil wrongs.

JURISDICTION

13. This action arises under 15 U.S.C. §1121, and 28 U.S.C. §1338(a), in that this

case arises under the Trademark Laws of the United States, 15 U.S.C. §§1051 et seq.

14. Jurisdiction is proper in this court and founded on 17 U.S.C. § 1338(a) and the

doctrine of supplemental jurisdiction. 28 U.S.C. 1367(a).

15. Jurisdiction is founded on diversity of citizenship and the amount in controversy

exceeds the sum of $75,000.00, exclusive of interests and costs. 28 U.S.C. 1332(a).

16. Jurisdiction over related common law claims is conferred under the provisions of

28 U.S.C. § 1338(b) in that said claims are joined with substantial and related claims under

the Trademark Laws of the United States, 15 U.S.C. § 1051 et seq.

17. This Court has specific personal jurisdiction over the defendants because they

have purposefully committed acts within this District from which these claims arise and/or

have committed tortuous acts outside of the District knowing that such acts would cause

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injury in this District. This Court’s general personal jurisdiction over the defendants flows

from their continuous, systematic and routine business contacts within this District and the

State of Connecticut.

VENUE

18. Venue is conferred in this court pursuant to 28 U.S.C. §l391(b)(2) and (c), and

1400(a).

GENERAL ALLEGATIONS

DJ PAULIE and Marks

19. The Plaintiff, Paul Lis, adopted the mark, “DJ PAULIE”, in 1971 and has used it

since 1973 continuously and to the present time in interstate commerce for entertainment

services in the nature of disc jockey services, and for goods, generally as follows,

a. In 1971 as an intern at the University of Hartford Radio Station, WWUH,

the Plaintiff performed on various shows and productions under the name, “DJ PAULIE”.

b. In 1973 the Plaintiff started his commercial career in entertainment services

as an intern for radio station WCCC AM & FM, and was then hired on the spot when an

On Air Personality walked off the air.

He was told by the manager that it was now his

show. Thus, he opened his show with, "Hello Connecticut and Massachusetts, this is ‘DJ

Paulie’

I'm

the new kid here on WCCC.” Thereafter, the Plaintiff, Paul Lis, made guest

appearances billed using the mark, “DJ PAULIE”, at numerous venues including but not

limited to nightclubs, car dealerships, restaurants, amusement parks, and private functions,

and in addition sold goods featuring the mark, “DJ PAULIE”, on hats, t-shirts, posters,

bumper stickers and coffee mugs. See Exhibit A, which is a photo of a t-shirt bearing the

logo still in use to the present time by DJ Paulie for promotions and advertising.

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c.

In 1975-1978 the Plaintiff continued to perform using the mark, “DJ

PAULIE”, in numerous venues including but not limited to radio broadcasting and/or

producing for WPOP, Hartford, CT, and WWCO, Waterbury, CT; he appeared as various

venues across the United States including but not limited to Los Angeles, Las Vegas,

Nashville, Miami, New York; and he worked in various recording studios as a musician,

producer, promoter, publisher and had his own record label, DJ Paulie Music.

d. In 1979-1989 the Plaintiff made numerous national appearances as “DJ

PAULIE” as a disc jockey, songwriter, producer and musician; during this time period he

was credited with over 1,000 songs he had written or produced; and he made remixes of

numerous Top 10 songs for nightclubs that featured hits by artists on the Billboard

Magazine Charts.

e. In 1990-2000 the Plaintiff was booked to appear seven nights a week at the

Cool Moose Nightclub in Hartford, Connecticut, billed as “DJ PAULIE”, (Exhibit B)

while still performing and appearing at weddings, schools, corporate functions throughout

the east coast and New England. The Plaintiff was interviewed by the Wall Street Journal

which

ran

the

story

on

the

front

page

of

the

publication

describing

that

unique

entertainment venue. (Exhibit C) In addition, the Plaintiff hosted, “DJ Paulie’s World”, a

cable television show interviewing famous celebrities and recording artists; he continued

as

master

of

ceremonies

and/or

disc

jockey

at

various

functions;

had

numerous

appearances on Fox Channel 61; and made appearances on public television auctions and

numerous charity functions and fundraisers as, “DJ PAULIE”.

f. In 1993-1995 the Plaintiff was a featured performer at the Clevelander

Nightclub in South Beach, Miami, FL, as “DJ PAULIE”, as well as various nightclubs and

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corporate appearances for large entertainment corporations in New York, Boston, and New

Jersey; and was certified by the state of Florida to teach broadcasting at the Connecticut

School Of Broadcasting in Palm Beach, Florida, where he taught radio and television

broadcasting, production and operations of equipment involved in both fields.

g. In 1995 the “DJ PAULIE” radio show first aired on the internet at the

University Of Hartford radio station as a weekly program, and grew to a daily program

with an international audience on the internet.

h. In 1996 the Plaintiff produced and managed various recording projects

under DJ PAULIE MUSIC producing two number one songs in the United Kingdom; the

Plaintiff was contacted by major record labels to act as a master of ceremonies, host and

booking agent to showcase new and existing label artists, such as Clarence Clemons of

New Jersey rocker, Bruce Springsteen's East Street Band.

i. In 1999, the Plaintiff purchased the domain, “DJPAULIE.COM” and

launched an internet radio website which has been in continuous use to the present time.

j. In 2001, the Plaintiff formed DJ Paulie Broadcasting, LLC, a Connecticut

Limited Liability company.

k. After the attack on 9-11 in New York City, the Plaintiff was hired by the

United States Post Office to write the music and produce their official 9-11 Memorial

Fundraising Song, “September Mourn”, for the benefit of the victims’ families. (Exhibit

D)

The CD received national accolades from well known individuals, including Senator

Christopher Dodd (Exhibit E) and President Bush (Exhibit F).

20. On May 1, 2008, the Plaintiff filed an application for registration of the mark, “DJ

PAULIE”

in

the

United

States

Patent

and

Trademark

Office,

which

was

granted

 

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registration as Reg. No. 3,735,703, on the Principal Trademark Register on January 12,

2010, for use of the mark in entertainment services in the nature of disc jockey services.

Said registration is outstanding and valid and a copy of the registration is attached hereto

as Exhibit G.

21. Plaintiff adopted the mark, “DJ PAULIE’S WORLDWIDE COUNTDOWN”, in

1994 and used it in interstate commerce for entertainment services at least as early as 2006.

22. On May 1, 2008, the Plaintiff filed an application for registration of said mark in

the United States Patent and Trademark Office, which was granted registration as Reg. No.

3,850,538, on the Principal Trademark Register on September 21, 2010, for use of the

mark in entertainment services in the nature of disc jockey services. Said registration is

outstanding and valid and a copy of the registration is attached hereto as Exhibit H.

23. Throughout his 40 year career, DJ Paulie has cultivated and maintained a

wholesome, family oriented image and reputation with G-Rated content in his appearances

and shows, and as such uses edited versions of some popular music selections to maintain

this image and in public appearances. See Exhibit I where DJ Paulie was selected by

Disney Radio to be a talent judge in 2000.

24. Throughout his 40 year career as DJ Paulie the Plaintiff has spent tens of

thousands of dollars in advertising and promotion to build his mark, “DJ Paulie”, into a

nationally recognized brand with a reputation as a preeminent entertainer and producer in

the music and entertainment business, along with its valuable associated good will, and has

used national and international electronic, print and other advertising venues to promote

said goods and services using, “DJ PAULIE” (Ex. G), “DJ PAULIE’S WORLDWIDE

COUNTDOWN” (Ex. H), and “I ‘LOVE’ DJ PAULIE” logo (Ex. A), and the internet

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domain, “DJPAULIE.COM”, i.e., the “DJ PAULIE marks”, where the marks are

prominently displayed on the internet website.

25. Since its formation in 2001, the Plaintiff, DJ Paulie Broadcasting, LLC, has

invested more than $2,000,000.00 in promotion and advertising of the DJ Paulie marks

via the internet radio show, promotional goods, and personal appearances and shows by DJ

Paulie.

26.

By virtue of the Plaintiff’s, DJ Paulie, decades-long and extensive use of the DJ

Paulie marks, his advertising and promotional campaigns to promote his goods and

services, and the substantial monies spent and invested therein, DJ Paulie has established

significant good will and valuable rights in, and ownership of, the DJ Paulie marks in

connection with music and entertainment goods and services.

Defendants’ Willful Infringement of the DJ Paulie Marks And Irreperable Harm to the Plaintiffs

27. Defendants

are

persons

and

entities

that

perform,

promote

and

distribute

entertainment services and goods to the general public utilizing the marks, DJ PAULIE, DJ

PAULY, DJ PAULY D and/or derivatives thereof.

28. On or about 2009 the Defendant, 495 Productions, produced a reality television

series titled “Jersey Shore” that aired on MTV Networks, a Viacom subsidiary, featuring

the defendant, Paul Delvecchio, Jr., performing or promoting himself as a disc jockey with

the moniker, “DJ Pauly” and/or “DJ Pauly D”.

The reality television show gained

immediate popularity by following a group of young adults pursuing a debauched lifestyle

suggestive of loose morals, violence, intoxication and liberal profanity – the exact opposite

of the reputation the Plaintiff, “DJ Paulie” that he had spent decades cultivating and

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acquiring such good will at great expense.

See Exhibit J where defendant Paul

Delvecchio, Jr., was alleged to have assaulted a male hairdresser in 2010.

29. The Jersey Shore show aired to a national audience in late 2009 and had an

immediate negative impact on the Plaintiff’s, DJPAULIE.COM internet ranking due to the

confusion presented by the similar spelling and identical sound of “DJ Pauly” and/or “DJ

Pauly D” with listeners and the internet public, and internet search engines began directing

traffic away from DJPAULIE.COM due to the saturation of the internet content with the

“DJ Pauly and “DJ Pauly D” marks.

30. MTV Networks, or its agents, placed content on the internet with metatags and/or

other internet searchable indicia intentionally utilizing the spelling of “DJ Paulie” to

capture and direct all traffic to their new star performer, “DJ Pauly” and/or “DJ Pauly D”.

31. In less than a month the ranking of the Plaintiff’s website, “DJ PAULIE.COM”

climbed from below 100,000 to over 225,000, which effectively destroyed national

advertiser interest in the internet radio show.

32. In an attempt to stop the confusion and infringement, counsel for the Plaintiff

called a Viacom representative in early 2010 to protest the confusion and infringement of

the DJ Paulie marks, which effort was rebuffed by Viacom.

33. Thereafter counsel for the Plaintiff mailed a cease and desist letter to the Viacom

representative dated March 3, 2010, giving notice to defendants of the marketplace

confusion of “DJ PAULY D”, loss of revenues, unauthorized use of the Plaintiff’s mark,

“DJ PAULIE”, and to cease and desist from the acts of trademark infringement, but

defendants refused to cease such acts and have continued such use and confusion unabated.

See Exhibit K attached and made part hereof.

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34.

To date the defendants have ignored the rights of the Plaintiffs, and bulldozed

ahead utilizing their immense market power (Exhibit L – Jersey Shore Cast Opens the

New York Stock Exchange) in advertising and promotion of their star performer, Paul

Delkvecchio, Jr., aka DJ Pauly D, by personal appearances, merchandise, music and video

goods all clearly advertising and promoting “DJ Pauly” and/or “DJ Pauly D”, thereby

further harming the rights and economic interests of the Plaintiffs.

Exhibit M (Jersey

Shore First Season uncensored DVD), Exhibit N (Jersey Shore First Season Soundtrack

CD), Exhibit O (2011 Jersey Shore Calendar), Exhibit P (DJPAULYD.COM website

merchandise store) and Exhibit Q (DJPAULY.COM website purchased merchandise).

35. Specifically the defendant, Paul Delvecchio, Jr., is advertised and promoted as the

current resident DJ at the famous Palms Casino in Las Vegas, Nevada, which advertising is

attached as Exhibits R and S.

36. Specifically the defendant, Baskin-Robbins, advertised, promoted and sold disc

jockey software incorporating the mark “DJ PAULY D”, and in association with the

persona of the defendant, Paul Delvecchio, Jr., advertised as “DJ Pauly D” to sell the

merchandise.

37. Specifically the defendant, Hearst, through its famous print and website and

media outlets under the brand, COSMOPOLITAN, advertises, promotes and sells it iPad

COSMO app incorporating the mark “DJ PAULY D”, in association with the persona of

the defendant, Paul Delvecchio, Jr., advertised as “DJ Pauly D” to sell the merchandise,

which advertising is incorporated herein as. Exhibit T.

38. Specifically the defendant, Paul Delvecchio, Jr., was advertised, promoted and

appeared as “DJ PAULY D” at the nightclub, Room960, at 960 Main Street, Hartford,

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Connecticut, on April 22, 2011, which advertising from Room960 is attached as Exhibit

U.

39. On February 25, 2010, the Defendant, Paul Delvecchio, Jr., filed an application

for registration of the mark, “DJ PAULY D”, in the United States Patent and Trademark

Office, Ser. No. 77929322, for entertainment services in the nature of disc jockey services,

which was first refused registration by the United States Trademark Examiner on the basis

of likelihood of confusion with “DJ PAULIE”, on May 14, 2010, and after amendment

refused a second time on November 24, 2010, and after further amendment, refused a third

time on June 9, 2011, which office action refusals are attached as Exhibit V.

40. On February 5, 2010, the Defendant, Paul Delvecchio, Jr., filed a second

application for registration of the mark, “DJ PAULY D”, in the United States Patent and

Trademark Office, Ser. No. 77929416, for entertainment services in the nature of live

performances by Paul Delvecchio, Jr., aka, “DJ Pauly D”, and for appearances as a Reality

TV star delivered by means of a Reality TV show, which was first refused registration on

the basis of likelihood of confusion and other defects, by the Trademark Examiner on

November 26, 2010, and after amendment refused a second time on November 24, 2010,

and after amendment refused a third time on June 9, 2011, and said refusals are attached as

Exhibit W.

FIRST CLAIM FOR RELIEF

(Violation of 15 U.S.C. §1051 et seq – Lanham Act Trademark Infringement)

41. Paragraphs 1 through 40 are incorporated herein as though set forth in their

entirety.

42. The Defendants have infringed Plaintiff’s federally registered marks in interstate

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commerce by various acts under the names and marks, DJ PAULIE, DJ PAULY and/or DJ

PAULY D, or derivatives thereof, by promoting, selling, offering for sale and advertising

services and goods under the aforesaid names and marks, and said use of said names and

marks is without the permission or authority of Plaintiff, and said use by defendants is

likely to cause confusion, to cause mistake and to deceive.

43. Defendants’ alleged acts of trademark infringement and unfair competition have

been committed with the intent to cause confusion, mistake and to deceive.

44. Defendants, by promotion, production, performance and distribution of goods and

services bearing the marks DJ PAULIE, DJ PAULY and/or DJ PAULY D have unlawfully

and willfully infringed Plaintiff’s marks in violation of Plaintiff’s exclusive rights therein.

45. Plaintiff has at least 37 years of use, advertisement and good will in the mark,

“DJ PAULIE”, and since 2001 invested an additional $2,000,000.00 in capitalization and

promotion of the DJ Paulie marks through the internet radio domain, DJPAULIE.COM,

and upon use by the defendants of the infringing and confusing marks, DJ PAULIE, DJ

PAULY

and/or

DJ

PAULY

D

and

derivatives,

has

lost

substantial

revenue

from

Defendants’ unlawful and willful infringement of Plaintiff’s trademarks.

46. The actual infringement and confusion by the defendants, and subsequent loss of

good will to “DJ PAULIE” and internet ranking to “DJPAULIE.COM” has caused the

Plaintiff to expend additional sums of money to attempt to establish a new internet radio

brand, “YOUSHOOK.COM”.

47. Defendants’ use and infringement of the DJ Paulie marks usurped the public’s

identification of the Plaintiff as the originator of the marks, thereby confusing the public

and causing the Plaintiff to suffer irreparable damages and lost profits.

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SECOND CLAIM FOR RELIEF

(Violation of 15 U.S.C. § 1125 – Lanham Act Trademark Dilution)

48. Plaintiff

hereby

re-alleges,

as

if

fully

set

forth

herein,

the

allegations

paragraphs 1 through 47 inclusive of Count One.

of

49. The DJ Paulie marks are strong and distinctive, and have long been in usein

connection with the entertainment services of the Plaintiff since at least 1973, and have

been the subject of substantial advertising and promotion throughout the United States and

internationally, is widely recognized by consumers and those in the trade, has been in

substantially exclusive use by Plaintiff, and is federally registered, as alleged above. The

acts of defendants alleged herein were commenced at least thirty years after Plaintiff's

mark became famous.

50. Defendants have made use of DJ PAULIE, DJ PAULY and/or DJ PAULY D or

their derivatives as mark(s) or trade name(s) in connection with the goods and services

which defendants have sold in United States interstate commerce. Defendants’ use of DJ

PAULIE, DJ PAULY and/or DJ PAULY D or their derivatives as mark(s) or trade name(s)

creates a likelihood of association with Plaintiffs famous mark “DJ PAULIE” arising from

its similarity to Plaintiff's famous mark. Defendant's acts are in violation of Lanham Act §

43(c) in that they are likely to cause dilution by impairing the distinctiveness of and by

harming the reputation of Plaintiff's famous mark, “DJ PAULIE”, all to the irreparable

injury and damage to the Plaintiff.

51. Defendants have committed these acts willfully and with the intent to trade on the

recognition of Plaintiff's mark and to harm the reputation of the Plaintiff’s marks.

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52.

Defendants, in unlawfully and willfully infringing Plaintiff’s marks, have created

a likelihood of confusion among the public as to the original source of the Plaintiff’s marks

and their respective goods and services, and have contributed to the dilution of the

distinctive quality of Plaintiff’s marks in the marketplace.

53. Defendants, by their unauthorized appropriation and use of Plaintiff’s marks, have

and are engaging in acts of unfair competition, unlawful appropriation, unjust enrichment,

wrongful deception of the purchasing public, and unlawful trading on Plaintiff’s good will

and the public’s acceptance of Plaintiff’s services, all to the Plaintiff’s irreparable damage.

THIRD CLAIM FOR RELIEF

(Violation of 15 U.S.C. § 1125(a) – Federal Unfair Competition)

54. Plaintiff

hereby

re-alleges,

as

if

fully

set

forth

herein,

the

allegations

paragraphs 1 through 47 inclusive of Count One.

of

55. This action for unfair competition is a substantial and related claim to Defendants’

infringement of Plaintiff’s marks and pursuant to 28 U.S.C. § 1338(b), the court has and

should assume pendent jurisdiction of this claim.

56. Defendants, in unlawfully and willfully infringing Plaintiff’s marks, have created

a likelihood of confusion among the public as to the original source of the Plaintiff’s marks

and their respective goods and services, and have contributed to the dilution of the

distinctive quality of Plaintiff’s marks in the marketplace.

57. Defendants, by their unauthorized appropriation and use of Plaintiff’s marks, have

and are engaging in acts of unfair competition, unlawful appropriation, unjust enrichment,

wrongful deception of the purchasing public, and unlawful trading on Plaintiff’s good will

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and the public’s acceptance of Plaintiff’s services, all to the Plaintiff’s irreparable damage.

FOURTH CLAIM FOR RELIEF

(Unfair Competition by Infringement of Common Law Rights)

58. Plaintiff

hereby

re-alleges,

as

if

fully

set

forth

herein,

the

allegations

paragraphs 1 through 47 inclusive of Count One.

of

59. Said acts of defendants constitute unfair competition and infringement of the

common law rights of plaintiff in said marks.

60. Continuously since at least 1973 the Plaintiff has used the mark, “DJ PAULIE”,

in commerce in the trade area of entertainment services to identify his services and to

distinguish them from those provided by others, prominently promoting and displaying the

mark “DJ PAULIE” in various forms of print and broadcast advertising, and by such use

said mark, “DJ PAULIE”, has developed a secondary and distinctive trademark meaning to

purchasers of services identified to and only provided by Plaintiff, and said use by

defendants in the same trade area is likely to cause and has caused confusion to said

purchasers.

61. This action for unfair competition is a substantial and related claim to Defendants’

infringement of Plaintiff’s marks and pursuant to 28 U.S.C. § 1338(b), the court has and

should assume pendent jurisdiction of this claim.

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FIFTH CLAIM FOR RELIEF

(Violation of Connecticut Unfair Trade Practices Act – Conn. Rev. Stat. 42 §110a et seq)

62. Plaintiff

hereby

re-alleges,

as

if

fully

set

forth

herein,

the

allegations

paragraphs 1 through 47 inclusive of Count One.

of

63. This action for violation of the Connecticut Unfair Trade Practices Act is a

substantial

and

related

claim

to

Defendants’

infringement

of

Plaintiff’s

trademarks

pursuant to 28 U.S.C. § 1338(b), the court has and should assume pendent jurisdiction of

this claim.

64. Defendants’

unauthorized

use

of

Plaintiff’s

trademarks

in

connection

with

personal or broadcast performances in entertainment services constitutes violation of the

Connecticut Unfair Trade Practices Act, including without limitation:

a. Passing off goods or services as those of another;

b. Causing confusion or misunderstanding as to source, sponsorship, approval

or certification of goods or services;

c. Causing confusion or misunderstanding as to affiliation, connection, or

association with, or certification by, another; and

d. Representing

that

goods

or

services

have

sponsorship,

approval,

characteristics, ingredients, uses, benefits, or quantities that they do not have or that a

person has as a sponsorship, approval, status, affiliation, or connection which he does not.

65. Defendants multiple immoral, deceptive and/or unscrupulous acts have infringed

the Plaintiff’s marks causing confusion and mislead the public.

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66.

Defendants’ actions are intended and/or operate to confuse the public.

67. Plaintiff’s sale of his own services is prejudiced by Defendants’ infringement and

dilution of Plaintiff’s marks, all to Plaintiff’s irreparable damage.

ALLEGATION OF DAMAGES

68. By reason of the acts of the defendants alleged herein, Plaintiff has and will suffer

damage to its $2,000,000.00 business investment, reputation and good will and the loss of

sales and profits Plaintiff would have made but for the willful acts of defendants.

69. Defendants threaten to continue to do the acts complained of herein, and unless

restrained and enjoined, will continue to do so, all to Plaintiff's irreparable damage. It

would be difficult to ascertain the amount of compensation which could afford Plaintiff

adequate relief for such continuing acts. Plaintiff's remedy at law is not adequate to

compensate it for injuries incurred and threatened.

WHEREFORE, the Plaintiffs pray:

A. Defendants be enjoined during the pendency of this action and permanently

thereafter from appropriating and using the DJ Paulie marks;

B.

That this Court grant an injunction pursuant to the powers granted it under 15

U.S.C.

§1116,

enjoining

and

restraining

defendants

and

their

agents,

servants

and

employees during the pendency of this action and permanently thereafter from directly or

indirectly using the name DJ PAULIE, DJ PAULY, DJ PAULY D or any other mark,

word, or name similar to Plaintiff's marks which is likely to cause confusion, mistake or to

deceive and (2) continuing any and all acts of unfair competition as alleged herein.

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C.

That this Court, pursuant to the power granted it under 15 U.S.C.A. 1118, order

that all labels, signs, prints and advertisements in the possession of defendants bearing the

marks DJ PAULIE, DJ PAULY, DJ PAULY D or any other mark, word, or name similar

to Plaintiff's marks be delivered up forthwith and destroyed.

D. That this Court, pursuant to the power granted it under 15 U.S.C.A. 1118, order

that all metadata, or other means of identification of the DJ Paulie marks on the internet, in

use or under the control of defendants or their agents, be removed from all internet uses,

websites and advertisements bearing the mark DJ PAULIE, DJ PAULY, DJ PAULY D or

any other mark, word, or name similar to the DJ Paulie marks.

F. That the defendants be required to account to Plaintiffs for any and all profits

derived by defendants from the sale of goods or services and for all damages sustained by

Plaintiff by reason of said acts of infringement and unfair competition acts complained of

herein.

F. That this Court award Plaintiffs treble the amount of actual damages suffered by

Plaintiff, including pre-judgment and post-judgment interest.

G. That this Court award punitive and exemplary damages against defendants and in

favor of Plaintiffs by reason of defendants’ willful infringement.

H. That costs of this action be awarded plaintiff.

I. That this is an exceptional case and that Plaintiff be awarded its reasonable

attorney's fees.

J. That this Court grant such other and further relief as it shall deem just.

- 19 -

Dated: June 30, 2011

Respectfully submitted,

Jose Rojas

- 20 -

JURY DEMAND

Plaintiff demands a trial by jury as to all triable issues.

Jose Rojas

- 21 -

EXHIBIT A - 1

EXHIBIT A - 1

EXHIBIT A - 2

EXHIBIT A - 2

SEPTEMBER MOURN CD 2002 Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

SEPTEMBER MOURN CD 2002

Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

EXHIBIT D - 1

SEPTEMBER MOURN CD 2002 Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

SEPTEMBER MOURN CD 2002

Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

EXHIBIT D - 2

SEPTEMBER MOURN CD 2002 Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

SEPTEMBER MOURN CD 2002

Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

EXHIBIT D - 3

SEPTEMBER MOURN CD 2002 Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

SEPTEMBER MOURN CD 2002

Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

EXHIBIT D - 4

SEPTEMBER MOURN CD 2002 Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

SEPTEMBER MOURN CD 2002

Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

EXHIBIT D - 5

SEPTEMBER MOURN CD 2002 Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

SEPTEMBER MOURN CD 2002

Music written by, then Produced, Mixed and Engineered by, “DJ PAULIE”

EXHIBIT D - 6

2000 DISNEY RADIO TALENT SEARCH PAUL LIS, host of the “THE DJ PAULIE SHOW” as

2000 DISNEY RADIO TALENT SEARCH PAUL LIS, host of the “THE DJ PAULIE SHOW” as JUDGE

EXHIBIT I - 1

2000 DISNEY RADIO TALENT SEARCH PAUL LIS, host of the “THE DJ PAULIE SHOW” as

2000 DISNEY RADIO TALENT SEARCH PAUL LIS, host of the “THE DJ PAULIE SHOW” as JUDGE

EXHIBIT I - 2

EXHIBIT J

EXHIBIT J

y ilnrrnnn ffillis fi Assmiarns he

www.MusicRowlaw.com

March 3, 2010

VIA E-MAIL ONLY

[\Iathew Howard Viacom lnternational, lnc

1515 Bro;adway

New York, NY 10036

matthew. h owa rd @ mtustaff. com

1l Music Circle South,

SuitelM

P.O. Box 330218

Nashville, Til 37287501

Phone: {615) 320-1332

FAX:320-8651

Re: united sfafes Patent and rrademark affice "DJ Paulie" Reg. No. 3,73s,70s

Dear Matthew:

Further to our conversation, I am

plkla DJ Paulie, a nationally recognized disc jockey from Connecticut, who owns

a reality star on

MTV's show "Jersey Shore" has been making unauthorized use of a mark, "DJ

the referenced mark. lt has come to our client's attention that

writing you on behalf of our client,

Paul Lis,

Pauly D" which we believe to be confusingly similar to our client's mark.

Our client's mark is registered for use in lnternational Class 41 in connection with

"Entertainment services in the nature of disc jockey services." Our client first

g!4"0

using the mark in commerce on

september 1s, 1gr3. Apparenfly, the

(U.S. Serial Numbeis: 7Tg2g32Z

refuse registration because of

MTV

and 77929416), although we believe the PTO will

personality has also filed for registration

our client's superior rights and the confusing similarity.

As I mentioned,

there has been actual marketplace confusion about the

origins of

the services. Our

client has spent the last 37 years working to establish a

throughout the entertainment industry, but as a result of

the mark, has already incurred serious financial and

actual confusion caused by the infringing mark.

Alexa, have diminished by apfrox-imately

the top 100,000, todiy in'the united

Furthermore,

due to the confusion

wholesome reputation

the MTV character's use of

emotional hardship due to the

His website rankings, according to

80,000. \ffhile his website used to be in

States his website is ranked at 225,281.

between the two marks our client as lost important investors and potential

advertising campaigns placing continuous strain on his financial situation.

Matthew Howard

03103/10

Pg.2

Over the last three months, Mr. Lis has received 112 emails

and 5 phone

"jersey

inquiries regarding whether or not he was DJ pauly D from MTV's

Shore." Also, over the internet numerous blogging sites have been posting

negative comments in regard to DJ Pauly D from the "Jersey Shore" but using

mistake; thereby, only leading to the

image. Just recently one of these

our client's trademark name DJ Paulie by

further tarnishment of our client's wholesome

sites made a threat on DJ Paulie's (Mr. Lis')

life if he was ever in the city of

Potomac, heightening the severity of this situation.

We would very much like to explore a satisfactory resolution of this problem, and v'tould appreciate a call to discuss. Of course, this is written with full reservation

of all of Mr. Lis' rights.

C: Paul Lis (via e-mail)

EXHIBIT L

EXHIBIT L

JERSEY SHORE FIRST SEASON CD SOUNDTRACK EXHIBIT M - 1

JERSEY SHORE FIRST SEASON CD SOUNDTRACK

EXHIBIT M - 1

JERSEY SHORE FIRST SEASON CD SOUNDTRACK EXHIBIT M - 2

JERSEY SHORE FIRST SEASON CD SOUNDTRACK

EXHIBIT M - 2

JERSEY SHORE FIRST SEASON CD SOUNDTRACK EXHIBIT N - 1

JERSEY SHORE FIRST SEASON CD SOUNDTRACK

EXHIBIT N - 1

JERSEY SHORE FIRST SEASON CD SOUNDTRACK EXHIBIT N - 2

JERSEY SHORE FIRST SEASON CD SOUNDTRACK

EXHIBIT N - 2

2011 JERSEY SHORE CAST CALENDAR with February “DJ PAULY D” EXHIBIT O - 1

2011 JERSEY SHORE CAST CALENDAR with February “DJ PAULY D”

EXHIBIT O - 1

2011 JERSEY SHORE CAST CALENDAR with February “DJ PAULY D” EXHIBIT O - 2

2011 JERSEY SHORE CAST CALENDAR with February “DJ PAULY D”

EXHIBIT O - 2

2011 JERSEY SHORE CAST CALENDAR with February “DJ PAULY D” EXHIBIT O - 3

2011 JERSEY SHORE CAST CALENDAR with February “DJ PAULY D”

EXHIBIT O - 3

DJPAULYD.COM website store 06/25/2011 EXHIBIT P

DJPAULYD.COM website store 06/25/2011

EXHIBIT P

DJPAULYD.COM website purchased merchandise EXHIBIT Q - 1

DJPAULYD.COM website purchased merchandise

EXHIBIT Q - 1

DJPAULYD.COM website purchased merchandise EXHIBIT Q - 2

DJPAULYD.COM website purchased merchandise

EXHIBIT Q - 2

DJPAULYD.COM website purchased merchandise EXHIBIT Q - 3

DJPAULYD.COM website purchased merchandise

EXHIBIT Q - 3

PALMS CASINO RESORT webpage 06/25/2011 EXHIBIT R - 1

PALMS CASINO RESORT webpage 06/25/2011

EXHIBIT R - 1

PALMS CASINO RESORT webpage 06/25/2011 EXHIBIT R - 2

PALMS CASINO RESORT webpage 06/25/2011

EXHIBIT R - 2

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 1

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 1

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 2

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 2

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 3

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 3

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 4

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 4

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 5

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 5

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 6

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 6

DJPAULYD.COM website 06/25/2011 EXHIBIT S - 7

DJPAULYD.COM website 06/25/2011

EXHIBIT S - 7

COSMOPOLITAN website EXHIBIT T - 1

COSMOPOLITAN website

EXHIBIT T - 1

COSMOPOLITAN website EXHIBIT T - 2

COSMOPOLITAN website

EXHIBIT T - 2

ROOM 960 NIGHTCLUB, HARTFORD, CONNECTICUT Appearance by “DJ PAULY D” on Friday, April 22, 2011

ROOM 960 NIGHTCLUB, HARTFORD, CONNECTICUT Appearance by “DJ PAULY D” on Friday, April 22, 2011

EXHIBIT U - 1

ROOM 960 NIGHTCLUB, HARTFORD, CONNECTICUT Appearance by “DJ PAULY D” on Friday, April 22, 2011

ROOM 960 NIGHTCLUB, HARTFORD, CONNECTICUT Appearance by “DJ PAULY D” on Friday, April 22, 2011

EXHIBIT U - 2

ROOM 960 NIGHTCLUB, HARTFORD, CONNECTICUT Appearance by “DJ PAULY D” on Friday, April 22, 2011

ROOM 960 NIGHTCLUB, HARTFORD, CONNECTICUT Appearance by “DJ PAULY D” on Friday, April 22, 2011

EXHIBIT U - 3

To:

Delvecchio, Jr., Paul (HVBoeziIII@aol.com)

Subject:

U.S. TRADEMARK APPLICATION NO. 77929322 - DJ PAULY D - N/A

Sent:

6/9/2011 8:41:21 AM

Sent As:

ECOM116@USPTO.GOV

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO.

MARK: DJ PAULY D

77929322

CORRESPONDENT ADDRESS:

HENRY V. BOEZI III LAW OFFICE OF HENRY V. BOEZI III 67 CEDAR ST STE 105 PROVIDENCE, RI 02903-1042

APPLICANT:

Delvecchio, Jr., Paul

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

HVBoeziIII@aol.com

*77929322*

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.uspto.gov/trademarks/teas/response_forms.jsp

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 6/9/2011

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where

all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

This Office action addresses a new examination issue; therefore, an appeal to the Trademark Trial and Appeal Board is considered premature. See 37 C.F.R. §2.141(a); TMEP §714.03. Applicant must respond on the merits directly to the trademark examining attorney.

This Office action is in response to applicant’s communication filed on May 21, 2011.

Amendment Would Exceed Scope of Services in Original Application

The proposed amendment to the identification cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing. See 37 C.F.R. §2.71(a).

The amendment identifies the following services: “ entertainment services, namely live appearances by a celebrity musician; entertainment services, namely personal appearance by a celebrity musician; entertainment services, namely live music concerts by a celebrity; entertainment services, namely playing, scratching, manipulating, composing, mixing recorded music, sound equipment, selection and arrangement of musical programs; entertainment services, namely live appearances by a professional entertainer; entertainment services in the nature of live performances by a musical artist; entertainment services in the nature of live musical performances by a performer or group; entertainment in the nature of live musical performances by a turntablist or a musical ensemble; entertainment in the nature of live musical performances by a turntablist; entertainment in the nature of live musical performances by a musical artist who uses a turntable as a musical instrument; entertainment in the nature of live musical performances by a musical artist who uses a mixer, software, and a turntable as a musical instrument; music composition of music for others; music production services; music production services in the nature of music re-mixing; music publishing; mixing and scratching of audio recordings using a turntable as a musical instrument, live performance of turntablism including scratching with turntables, sounds, loops, vocals from a cd, vinyl record or any electronic source; music production services by manipulating sounds and creating music using phonograph or digital turntables and a dj mixer, musician who uses a turntable as a musical instrument to produce unique sounds and not reproduced, audio recording and production.”

Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. Id.; see TMEP §§1402.06 et seq., 1402.07. Therefore, this wording should be deleted from the identification.

Section 2(d) Refusal

Applicant’s arguments have been considered and found unpersuasive.

address applicant’s arguments fully upon receipt of a response to this Office action. The refusal under Section 2(d) based on U.S. Registration Nos. 3735703 and 3850538 is maintained and continued.

The examining attorney will

/Cynthia Sloan/ Examining Attorney Law Office 116 Telephone 571.272.9219 Cynthia.Sloan@uspto.gov (Informal queries only)

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please

wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; 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 or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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 at http://www.uspto.gov/teas/eTEASpageE.htm.

To:

Delvecchio, Jr., Paul (HVBoeziIII@aol.com)

Subject:

U.S. TRADEMARK APPLICATION NO. 77929322 - DJ PAULY D - N/A

Sent:

11/24/2010 2:22:42 PM

Sent As:

ECOM116@USPTO.GOV

Attachments: Attachment - 1 Attachment - 2 Attachment - 3

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO.

MARK: DJ PAULY D

77929322

CORRESPONDENT ADDRESS:

HENRY V. BOEZI III LAW OFFICE OF HENRY V. BOEZI III 67 CEDAR ST STE 105 PROVIDENCE, RI 02903-1042

APPLICANT:

Delvecchio, Jr., Paul

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

HVBoeziIII@aol.com

*77929322*

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.uspto.gov/teas/eTEASpageD.htm

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 11/24/2010

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and

must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

This Office action is in response to applicant’s communication filed on November 12, 2010.

The following requirements have been satisfied: Section 2(f) claim statement, clarification of name of individual and substitute specimens. TMEP §§713.02, 714.04.

The refusal based on Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127, use as a trade name, is WITHDRAWN.

The refusal based on Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq., likelihood of confusion with U.S. Registration No. 3735703, is CONTINUED.

Applicant’s arguments have been considered and found unpersuasive.

address applicant’s arguments fully upon receipt of a response to the following refusal.

The examining attorney will

Pending Reference Has Matured Into a Registration

On May 14, 2010, the examining attorney advised applicant about prior pending Application Serial No.

77463093. The referenced prior-pending application has since registered. Therefore, registration is

refused as follows.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3850538. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP

§1207.01(b).

In the present case, applicant’s mark, DJ PAULY D, is similar to the registered mark, DJ PAULIE’S WORLDWIDE COUNTDOWN, in sound, appearance and connotation. Overall, the marks have the same commercial impression.

The dominant portions of the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).

The ending of the dominant portion of the registered mark includes an apostrophe and letter “S.”

additional matter has little, if any, trademark significance and does not otherwise affect the overall similarity of the marks in terms of commercial impression. See In re Binion, 93 USPQ2d 1531, 1534

has little, if any,

significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231

USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc. , 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).

(TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark

This

The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of

confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l , 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and

there is no other wording to distinguish it from registrant’s mark.

less dominant wording, WORLDWIDE COUNTDOWN, does not obviate the likelihood of confusion. Also, the addition of the initial “D” does not create a distinct commercial impression.

In the present case, the deletion of the

Comparison of the Goods/Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Applicant’s services consist of “entertainment in the nature of disc jockey services.” services consist of “entertainment services in the nature of disc jockey services.”

Registrant’s

The parties’ services are identical and are sold through the same trade channels.

Accordingly, the

services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the services originate from the same source.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

/Cynthia Sloan/ Examining Attorney Law Office 116 Telephone 571.272.9219 Facsimile 571.273.9116

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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 at http://www.uspto.gov/teas/eTEASpageE.htm.

To:

Delvecchio, Jr., Paul (HVBoeziIII@aol.com)

Subject:

U.S. TRADEMARK APPLICATION NO. 77929322 - DJ PAULY D - N/A

Sent:

5/14/2010 3:31:10 PM

Sent As:

ECOM116@USPTO.GOV

Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO:

77/929322

MARK: DJ PAULY D

CORRESPONDENT ADDRESS:

HENRY V. BOEZI III LAW OFFICE OF HENRY V. BOEZI III 67 CEDAR ST STE 105 PROVIDENCE, RI 02903-1042

APPLICANT:

Delvecchio, Jr., Paul

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

HVBoeziIII@aol.com

*77929322*

RESPOND TO THIS ACTION:

http://www.uspto.gov/teas/eTEASpageD.htm

GENERAL TRADEMARK INFORMATION:

http://www.uspto.gov/main/trademarks.htm

OFFICE ACTION

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 5/14/2010

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:

Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. For a complete

list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. Responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

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

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3735703. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services. See Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973); TMEP §1207.01. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b). In comparing the goods and/or services, it is necessary to show that they are related in some manner. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP

§1207.01(a)(vi).

Comparison of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d

1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP

§1207.01(b).

In the present case, applicant’s mark, DJ PAULY D, is similar to the registered mark, DJ PAULIE, in sound, appearance and connotation. Overall, the marks have the same commercial impression.

Applicant has merely added the initial “D” to registrant’s mark.

registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc. , 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).

The mere addition of a term to a

In the present case, the dominant portion of the parties’ marks, PAULY and PAULIE are identical in sound. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).

Comparison of the Goods/Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Applicant’s services consist of “entertainment in the nature of disc jockey services.” services consist of “entertainment services in the nature of disc jockey services.”

Registrant’s

The parties’ services are identical and are sold through the same trade channels.

services would be sold to the same class of purchasers and encountered under circumstances leading one

to mistakenly believe the services originate from the same source.

Accordingly, the

Prior Pending Application

The filing date of pending Application Serial No. 77463093 precedes applicant’s filing date.

referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of

See attached

applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

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.

Applicant should note the following additional ground for refusal.

TRADE NAME - NOT A SERVICE MARK

Registration is refused because the applied-for mark, as used on the specimen of record, is used only as a trade name to identify applicant’s business; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Walker Process Equip. Inc., 233 F.2d 329, 110 USPQ 41 (C.C.P.A. 1956); TMEP §§904.07(b), 1301.02(a). Although a designation may function as both a trade name and a service mark, the Trademark Act does not provide for registration of matter that functions solely as a trade name. In re Univar Corp., 20 USPQ2d 1865, 1866-67 (TTAB 1991); TMEP §1202.01.

The determination as to whether a trade name also functions as a service mark is based on the manner in which the applied-for mark is used on the specimen or any other evidence of use, as well as the probable impact of such use on purchasers. See In re Univar Corp., 20 USPQ2d at 1867; In re The Signal Cos., 228 USPQ 956, 957 (TTAB 1986); TMEP §1202.01. In this case, the specimen shows the applied-for mark used on a receipt appearing as part of an address which does not project a separate commercial impression.

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing proper service mark use for the services specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “ The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “ Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

Response Guidelines

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Applicant must respond to the requirement(s) set forth below.

Unnecessary Section 2(f) Claim

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f). However, this claim is unnecessary because the mark appears to be inherently distinctive. See 15 U.S.C. §1052(f); TMEP §1212.02(d).

Applicant can withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record. See TMEP §1212.02(d). If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.

Name of an Individual

Applicant must clarify whether the name or signature in the applied-for mark identifies a particular living individual. Written consent is required for registration of a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a specific living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.

If the name or signature shown in the mark identifies a particular living individual, then applicant must submit the following:

(1) A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname or signature as a trademark and/or service mark with the USPTO; and

If the

name represents that of a pseudonym, stage name or nickname, applicant must include a statement that “PAULY D identifies the <pseudonym/stage name/nickname> of Paul Delvecchio, Jr., a living individual whose consent is of record.”

(2) A statement that “PAULY D identifies a living individual whose consent is of record.”

See TMEP §§813, 813.01(a), 1206.04(a).

However, if the name or signature in the mark does not identify a living individual, then applicant

must submit a statement that “PAULY D does not identify a living individual.”

TMEP §813.01(b).

/Cynthia Sloan/ Examining Attorney Law Office 116 Telephone 571.272.9219 Facsimile 571.273.9116

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

Attachment - 118 Attachment - 119 Attachment - 120 Attachment - 121 Attachment - 122 Attachment - 123 Attachment - 124 Attachment - 125 Attachment - 126 Attachment - 127 Attachment - 128 Attachment - 129 Attachment - 130 Attachment - 131 Attachment - 132 Attachment - 133 Attachment - 134 Attachment - 135 Attachment - 136 Attachment - 137

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO.

MARK: DJ PAULY D

77929416

CORRESPONDENT ADDRESS:

HENRY V. BOEZI III LAW OFFICE OF HENRY V. BOEZI III 67 CEDAR ST STE 105 PROVIDENCE, RI 02903-1042

APPLICANT:

Delvecchio, Jr., Paul

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

HVBoeziIII@aol.com

*77929416*

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.uspto.gov/trademarks/teas/response_forms.jsp

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 6/9/2011

THIS IS A FINAL ACTION.

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

This Office action is in response to applicant’s communication filed on May 21, 2011.

FINAL Refusal – Section 2(d) – Likelihood of Confusion

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3735703 and 3850538. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a). In addition, the following requirement is now made FINAL: Requirement for an amendment to the identification of services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.; 37 C.F.R.

§2.64(a).

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP

§1207.01(b).

In the present case, applicant’s mark is DJ PAULY D and the registered marks are PAULIE’S WORLDWIDE COUNTDOWN.

DJ PAULIE and DJ

Applicant argues that likelihood of confusion cannot be predicated on dissection of a mark. Applicant is correct in that the marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Additionally, applicant analyzes the marks according to the numbers of syllables, rhythmic or melodic patterns, and number of letters. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re Nat’l Data Corp. , 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ

693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP

§1207.01(b)(viii), (c)(ii). In the present case, the names DJ PAULY, DJ PAULIE and DJ PAULIE’S are

the dominant features of the marks and are given greater weight in determining the likelihood of confusion.

Applicant argues that the ending of the registered mark in U.S. Registration No. 3850538 includes an

apostrophe and letter “s.”

otherwise affect the overall similarity of the marks in terms of commercial impression. See In re Binion,

93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s

mark

Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc. , 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).

This additional matter has little, if any, trademark significance and does not

has little, if any, significance for consumers in distinguishing it from the cited mark”); In re

Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.

Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp. ,

753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Applicant

has disclaimed DJ and registrant has disclaimed DJ and WORLDWIDE COUNTDOWN. This leaves the nearly identical names PAULY, PAULIE and PAULIE’S, which are highly significant in creating a commercial impression.

Applicant argues that the dominant portion of its mark is PAULY D; however, the mere addition of a term

to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc. , 380 F.3d 1340,

71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling

Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009)

(TITAN and VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD

PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii).

letter D to registrant’s mark in U.S. Registration No. 3735703.

In the present case, applicant has merely added the

Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the

mind of a purchaser and remembered” when making purchasing decisions).

the wording DJ PAULY and DJ PAULIE and DJ PAULIE’S. likely to be impressed upon the minds of potential purchasers.

Here, the marks begin with

This wording sounds the same and is most

Applicant contends that DJ PAULY D is a “double entendre.”

has a double connotation or significance as applied to the goods and/or services. TMEP §1213.05(c); see In re Colonial Stores Inc., 394 F.2d 549, 552-53, 157 USPQ 382, 384-85 (C.C.P.A. 1968) (finding SUGAR & SPICE a double entendre and not descriptive for bakery products because it evokes the nursery rhyme “sugar and spice and everything nice”).

A “double entendre” is an expression that

A mark that comprises a “double entendre” will not be refused registration as merely descriptive

[emphasis added] if one of its meanings is not merely descriptive in relation to the goods and/or services. TMEP §1213.05(c). However, in the present case, the issue is likelihood of confusion rather than descriptiveness; therefore, applicant’s argument is unfounded.

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point- Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

Applicant argues that PAULY D represents the “first name and first initial of applicant” and that

“registrant has a different first initial of his last name (PAUL L).

registrant’s mark does not include the letter “L.”

applicant Paul Delvecchio. Applicant’s mark does not include his surname.

This argument is irrelevant because

Likewise, applicant states that DJ PAULY D represents

Applicant discusses several cases involving third-party registrations. Third-party registrations are entitled

to

little weight on the question of likelihood of confusion because they are “not evidence of what happens

in

the market place or that customers are familiar with them.”

AMF Inc. v. Am. Leisure Prods., Inc., 474

F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); see In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF, 474 F.2d at 1406, 177 USPQ at 269; In re Total Quality Group, Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

Applicant asserts his “right to use his own name as a mark.”

confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP

§1207.01(b).

This issue here is whether the marks will

Comparison of the Servoces

Applicant’s goods/services consist of “entertainment services, namely, live performances by a musical performer playing, scratching, manipulating, composing, and mixing recorded music; entertainment in the nature of live performances by a disc jockey; entertainment services, namely, personal appearances by a reality TV star; entertainment services, namely, the provision of continuing segments featuring a television personality delivered by means of a reality TV show.”

Registrant’s services consist of “entertainment in the nature of disc jockey services.”

identical services, i.e., disc jockey services. Applicant’s other services are directly related to registrant’s services because the services are the type sold to consumers seeking musical entertainment.

The parties have

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

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 goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, applicant’s disc jockey, musical performances and television entertainment and registrant’s disc jockey services, are of a kind that may emanate from a single source under a single mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); 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).

Also attached are websites from the GOOGLE® search engine showing that disc jockeys are also television personalities. Consumers who encounter the respective services under very similar marks are likely to mistakenly believe that the services emanate from a common origin.

Applicant argues that its activities are geographically separate from those of registrant; however, applicant seeks a geographically unrestricted registration. The owner of a registration without specified limitations enjoys a presumption of exclusive right to nationwide use of the registered mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), regardless of its actual extent of use. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983). Therefore, the geographical extent of applicant’s and registrant’s activities is not relevant to a likelihood of confusion determination.

Applicant argues that sophisticated purchasers can distinguish between the services offered by the subject parties. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).

Applicant has submitted a list of registrations for “PAUL.”

registrations does not make such registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.

However, the mere submission of a list of

To make third-party registrations part of the record, an applicant must submit copies of the actual

registrations or printouts of the registrations from the USPTO’s database.

USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP §1208.02; TMEP §710.03.

In re Ruffin Gaming LLC, 66

Applicant asserts his claim under Section 2(f). Here, the issue is whether there is a likelihood of confusion rather than whether the proposed mark is descriptive under Section 2(e)(1) where a claim of acquired distinctiveness could overcome a descriptiveness refusal.

Applicant attempts to differentiate the parties’ services by arguing that registrant’s services are based on “disc jockey services” and that applicant’s services are “turntablism,” “mixing, creating, and composing unique music for a live performance by using a turntable as a musical instrument…” and “club music.” In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc. , 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-

05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP

§1207.01(a)(iii).

See the attached evidence showing that disc jockeys engage in “turntablism.”

In this case, the identification set forth in the cited registration uses broad wording to describe registrant’s goods and/or services and does not contain any limitations as to nature, type, channels of trade or classes of purchasers. Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. See Citigroup

Inc. v. Capital City Bank Grp., Inc.,

Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981);

TMEP §1207.01(a)(iii).

F.3d

, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump

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, 1025 (Fed. Cir. 1988).

Amendment Would Exceed Scope of Services in Original Application

The proposed amendment to the identification cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing. See 37

C.F.R. §2.71(a).

The amendment identifies the following services: “ Entertainment, namely, personal appearances by an

entertainer, television personality, television celebrity, and musician; entertainment services, namely, live, televised and movie appearances by a professional entertainer; entertainment, namely, television show production; television and cable television show production; entertainment in the nature of on-going television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions, competitions and spoken word; entertainment services, namely, providing on-going television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions, competitions and spoken word; entertainment in the nature of on-going television and cable television reality based shows and

programs.”

televised and movie appearances, television and cable television show production, ongoing television and cable television programs, television reality based shows and programs is not within the scope of live performances by an individual or the provision of continuing segments featuring a television personality delivered by means of a reality TV show.”

This wording is beyond the scope of the original wording because personal appearances,

Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. Id.; see TMEP §§1402.06 et seq., 1402.07. Therefore, this wording should be deleted from the identification.

Applicant may adopt the following identification of services, if accurate:

Entertainment services, namely, live performances by a musical performer playing, scratching, manipulating, composing, and mixing recorded music; entertainment in the nature of live performances by a disc jockey; entertainment services, namely, personal appearances by a reality TV star; entertainment services, namely, the provision of continuing segments featuring a television personality delivered by means of a reality TV show, in International Class 41.

See TMEP §1402.01.

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

In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.

Response Guidelines – Final Action

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Cynthia Sloan/ Examining Attorney Law Office 116 Telephone 571.272.9219 Cynthia.Sloan@uspto.gov (Informal queries only)

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please

wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; 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 or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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 at http://www.uspto.gov/teas/eTEASpageE.htm.

To:

Delvecchio, Jr., Paul (HVBoeziIII@aol.com)

Subject:

U.S. TRADEMARK APPLICATION NO. 77929416 - DJ PAULY D - N/A

Sent:

11/26/2010 2:05:40 PM

Sent As:

ECOM116@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

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO.

MARK: DJ PAULY D

77929416

CORRESPONDENT ADDRESS:

HENRY V. BOEZI III LAW OFFICE OF HENRY V. BOEZI III 67 CEDAR ST STE 105 PROVIDENCE, RI 02903-1042

APPLICANT:

Delvecchio, Jr., Paul

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

HVBoeziIII@aol.com

*77929416*

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.uspto.gov/teas/eTEASpageD.htm

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 11/26/2010

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

This Office action is in response to applicant’s communication filed on November 12, 2010.

The following requirements have been satisfied: Section 2(f) claim statement, clarification of name of individual. TMEP §§713.02, 714.04.

The refusal based on Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq., likelihood of confusion with U.S. Registration No. 3735703, is CONTINUED.

Amendment to Identification of Goods/Services Unacceptable

The proposed amendment to the identification cannot be accepted because it refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing. See 37 C.F.R. §2.71(a).

The amendment identifies the following goods and/or services:

Musical sound recordings; series of recorded compact discs, CD-ROMS, DVDS, DVD-ROMS, video tapes, cassette tapes, or video and audio digital musical media featuring music or musical performances; downloadable musical audio or video recordings featuring music and musical performances; downloadable musical sound recordings; musical sound recordings; audio or visual recordings featuring music or musical performances; records, cassettes, compact discs, CD-ROMs, DVDs, DVD-ROMs, video tapes, laser discs, video discs or digital media featuring music or musical performances; multimedia software featuring music and musical performances; wallpaper, browser skins, desktop icons and other multi-media materials in the nature of downloadable music and videos, in International Class 9.

Entertainment in the nature of visual and audio performances and musical shows; Entertainment in the nature of acoustic and/or electronically based live musical band integrated with turntablist; Music

production services namely, the production and integration of acoustic and/or electronic band and/or turntablist; Entertainment namely, live performances by a musical band; Entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Music composition and transcription for others; Music publishing services; Music transcription for others; Planning arrangement of showing movies, shows, plays or musical performances; Presentation of musical performance; Publication of musical texts; Theatrical and musical floor shows provided at discotheques and nightclubs, in International Class 41.

Bar, Hotel, and Restaurant services, in International Class 43.

This wording is beyond the scope of the original wording because musical sound recordings, downloadable musical audio or video recordings, downloadable musical sound recordings, musical sound recordings, audio or visual recordings featuring music and other media are goods which are not within the scope of entertainment services in the nature of live performances or continuing performances by an individual. In addition, bar, hotel and restaurant services are not within the scope of entertainment services.

Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. Id.; see TMEP §§1402.06 et seq., 1402.07. Therefore, this wording should be deleted from the identification.

The wording “entertainment services, namely, live performances by a musical performer playing, scratching, manipulating, composing, and mixing recorded music” is acceptable as amended.

Applicant’s arguments have been considered and found unpersuasive.

address applicant’s arguments fully upon receipt of a response to the following refusal.

The examining attorney will

Pending Reference Has Matured Into a Registration

On May 14, 2010, the examining attorney advised applicant about prior pending Application Serial No.

77463093. The referenced prior-pending application has since registered. Therefore, registration is

refused as follows.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3850538. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP

§1207.01(b).

In the present case, applicant’s mark, DJ PAULY D, is similar to the registered mark, DJ PAULIE’S WORLDWIDE COUNTDOWN, in sound, appearance and connotation. Overall, the marks have the same commercial impression.

The dominant portions of the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).

The ending of the dominant portion of the registered mark includes an apostrophe and letter “S.” additional matter has little, if any, trademark significance and does not otherwise affect the overall

similarity of the marks in terms of commercial impression. See In re Binion, 93 USPQ2d 1531, 1534

has little, if any,

significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc. , 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).

(TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark

This

The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of

confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l , 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and

there is no other wording to distinguish it from registrant’s mark.

less dominant wording, WORLDWIDE COUNTDOWN, does not obviate the likelihood of confusion. Also, the addition of the initial “D” does not create a distinct commercial impression.

In the present case, the deletion of the

Comparison of the Goods/Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476

(TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Applicant’s services consist of “entertainment services, namely, live performances by a musical performer playing, scratching, manipulating, composing, and mixing recorded music.”

Registrant’s services consist of “entertainment services in the nature of disc jockey services.”

Applicant’s goods are related to registrant’s goods because the goods/services are the type sold to consumers seeking musical entertainment featuring recorded music. The goods/services are sold through the same trade channels. Accordingly, the goods/services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source.

In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Dakin’s Miniatures, Inc. , 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii).

In this case, the identification set forth in the cited registration uses broad wording to describe registrant’s goods and/or services and does not contain any limitations as to nature, type, channels of trade or classes of purchasers. Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii). See the attached printouts of websites from a www.google.com search showing that scratching, manipulating and mixing are common activities of disc jockeys.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

/Cynthia Sloan/ Examining Attorney Law Office 116 Telephone 571.272.9219 Facsimile 571.273.9116

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/. Please wait 48-72 hours from the issue/mailing date before

Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40

Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43

- 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment -

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO:

77/929416

MARK: DJ PAULY D

CORRESPONDENT ADDRESS:

HENRY V. BOEZI III LAW OFFICE OF HENRY V. BOEZI III 67 CEDAR ST STE 105 PROVIDENCE, RI 02903-1042

APPLICANT:

Delvecchio, Jr., Paul

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

HVBoeziIII@aol.com

*77929416*

RESPOND TO THIS ACTION:

http://www.uspto.gov/teas/eTEASpageD.htm

GENERAL TRADEMARK INFORMATION:

http://www.uspto.gov/main/trademarks.htm

OFFICE ACTION

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 5/14/2010

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:

Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37

C.F.R. §2.6(a)(1)(iv); TMEP §819.04. Responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

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

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3735703. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services. See Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973); TMEP §1207.01. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b). In comparing the goods and/or services, it is necessary to show that they are related in some manner. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP

§1207.01(a)(vi).

Comparison of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP

§1207.01(b).

In the present case, applicant’s mark, DJ PAULY D, is similar to the registered mark, DJ PAULIE, in

sound, appearance and connotation. Overall, the marks have the same commercial impression.

Applicant has merely added the initial “D” to registrant’s mark.

registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc. , 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).

The mere addition of a term to a

In the present case, the dominant portion of the parties’ marks, PAULY and PAULIE are identical in sound. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).

Comparison of the Goods/Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Applicant’s services consist of “Entertainment in the nature of live performances by Paul Delvecchio, Jr. a/k/a DJ Pauly D; entertainment services, namely, personal appearances by a Reality TV Star; entertainment services, namely, the provision of continuing performances featuring Paul Delvecchio, Jr. a/k/a DJ Pauly D delivered by means of a reality TV show.” Registrant’s services consist of “entertainment services in the nature of disc jockey services.” Applicant’s goods are related to registrant’s goods because the goods/services are the type sold to consumers seeking entertainment by a performing artist. The goods/services are sold through the same trade channels. Accordingly, the goods/services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source. Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely, applicant’s live performances, personal appearances and television series and registrant’s disc jockey services, are of a kind that may emanate from a single source. In re Infinity Broad. Corp. of Dallas, 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).

Prior Pending Application

The filing date of pending Application Serial No. 77463093 precedes applicant’s filing date.

referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

See attached

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.

Response Guidelines

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Applicant must respond to the requirement(s) set forth below.

Unnecessary Section 2(f) Claim

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f). However, this claim is unnecessary because the mark appears to be inherently distinctive. See 15 U.S.C. §1052(f); TMEP §1212.02(d).

Applicant can withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record. See TMEP §1212.02(d). If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.

Name of an Individual

Applicant must clarify whether the name or signature in the applied-for mark identifies a particular living individual. Written consent is required for registration of a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a specific living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.

If the name or signature shown in the mark identifies a particular living individual, then applicant must submit the following:

(1) A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname or signature as a trademark and/or service mark with the USPTO; and

If the

name represents that of a pseudonym, stage name or nickname, applicant must include a statement

(2) A statement that “PAULY D identifies a living individual whose consent is of record.”

that “PAULY D identifies the <pseudonym/stage name/nickname> of Paul Delvecchio, Jr., a living individual whose consent is of record.”

See TMEP §§813, 813.01(a), 1206.04(a).

However, if the name or signature in the mark does not identify a living individual, then applicant

must submit a statement that “PAULY D does not identify a living individual.”

TMEP §813.01(b).

Identification of Services

The identification of services must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

Applicant may adopt the following identification, if accurate: Entertainment in the nature of live performances by a disc jockey; entertainment services, namely, personal appearances by a reality TV star; entertainment services, namely, the provision of continuing segments featuring a television personality delivered by means of a reality TV show.

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

/Cynthia Sloan/ Examining Attorney Law Office 116 Telephone 571.272.9219 Facsimile 571.273.9116

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system