UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/523179
APPLICANT: WIZARDS OF THE COAST, INC.
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*76523179* |
CORRESPONDENT ADDRESS: PAUL N. VANASSE DIRECTOR- INTELLECTUAL PROPERTIES HASBRO,
INC. 1027
NEWPORT AVENUE PAWTUCKET, RHODE ISLAND 02862 |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: DUEL MASTERS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/52317976/523176
On April 28, 2004, action on this application was suspended pending the disposition of Application Serial No. 76252917. The referenced application has matured into a registration. Therefore, registration is refused as follows.
SUBSTANTIVE REFUSAL -- LIKELIHOOD OF CONFUSION
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2889566. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. 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 Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). 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. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
The question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972). 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. Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (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 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
When applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference." Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).
Applying the above analysis, the marks are substantially similar. Applicant's mark DUEL MASTERS is virtually identical to
the recognizable and dominant portion of the registered mark DUEL MASTER’S GUIDE. In the instant case, it is appropriate to give less weight to the "GUIDE" portion of applicant's
the registered mark because of the descriptive nature of the disclaimed word. "^."
As such, viewed as a whole, applicant's mark is substantially similar in sound, appearance, connotation and commercial impression to the registered mark.
As to the second half of the test, as set forth below, the applicant’s goodsgoods are in part identical and in part closely related to registrant’s computer products, namely, computer game programs; video game cartridges; video game CD-ROMs; video game machines for use with televisions;
computer game CD-ROMs; pre-recorded DVDs featuring video games and information, news, rules, hints and strategy about card games, electronic games, computer games and video games; video game
programs; video game programs for use with television sets; video game joysticks; prerecorded video tapes featuring information, news, rules, hints and strategy about card games, electronic games,
computer games and video games in Class 9 and playing cards and instruction manual sold therewith and trading cards in Class 16..
It is noted that video game companies often license their product name to toy products such as action figures, board games, toy vehicles, etc.
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 as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that applicant’s goods and registrant’s goods are of a kind that may emanate from a single source. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
Note that the refusal pertains all of the goods in applicant’s identification of goods excerpt for Christmas tree decorations.
The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738, 741 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). TMEP §1207.01(a)(i).
Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to applicant’s identified goods or services for purposes of analysis under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion. CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).
Thus, since the marks are substantially similar and the goods are in part closely related, there is a likelihood of confusion and registration must be refused.
The overriding concern is to prevent buyer confusion as to the source of the goods. See, e.g., Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant and against the applicant who has a legal duty to avoid selecting a mark which even approaches the registered mark. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988); TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997) (as the newcomer, applicant has the opportunity of avoiding confusion and is obligated to do so); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974); Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000) (“It is a well-established principle that one who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril, and any doubt as to likelihood of confusion must be resolved against the newcomer and in favor of the prior user or registrant.”); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1212 (TTAB 1999); Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979); see also Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181, 6 USPQ2d 2034, 2038 (9th Cir. 1988) ("A newcomer who has the 'entire material universe' or, stated in other terms, 'a whole dictionary full of words, an encyclopedia full of proper names, or a world atlas full of place names,' from which it could have chosen its name and mark, has the duty to avoid the use of a mark similar to an established one."). TMEP §§1207.01(d)(i).
Although registration has been refused, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
RESPONSE
If applicant has particular questions regarding any of the issues set forth in this Office action, applicant may telephone the assigned trademark examining attorney.
FAILURE TO RESPOND -- ABANDONMENT OF SPECIFIC GOODS
If applicant fails to respond within six months of the mailing date of this final action, then the goods to which the refusal(s) and/or requirement(s) apply will be deleted from the application. The application will proceed forward for the remaining goods only [Christmas tree decorations]. 37 C.F.R. §2.65(a).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 108
U.S. Patent and Trademark Office
Tel. (571) 272-9343
Fax. (571) 273-9108 Trademark Examining Attorney
Law Office 108
U.S. Patent and Trademark Office
Tel. (571) 272-9343
Fax. (571) 273-9108
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.