UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/525272

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2198740 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if 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 International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

The applicant applied to register the mark FREEDOM FIGHTERS for “computer programs, namely computer software, for use in electronic games for use as entertainment or education, that may be downloaded from a global computer network; electronic game programs; computer game software; video game software; video games, namely video game discs, video game DVDs and video game cassettes; computer games software, downloadable electronic publications in the nature of magazines, book, instruction manuals in the field of computer games software and computer games supplied on-line from electronic databases and provided through a global computer network; all media upon which computer game software and video game software is stored, namely video game and computer game tapes, CD-ROMs, DVDs, cassettes, where such media contains pre-recorded video game software when sold; prerecorded video cassettes and DVDs featuring games and games software; prerecorded compact discs featuring games, games software, films and music; cinematographic and television films featuring computer game plots and characters; motion picture films, cartoon films, and animated films featuring computer game plots and characters; instruction manuals recorded on electronic media, namely CD-ROMs, compact discs, DVDs, and cassettes: toys, games and playthings, namely model cars, puppets; board games; hand held units for playing electronic games; toy model hobbycraft kits; play figures and action figures; coin-operated video games;  entertainment services, namely live musical shows and performances by musical bands, providing online computer games; electronic publishing namely publication of text and graphic works of others on CD-ROMs, compact discs, DVDs and cassette featuring information about electronic games; motion picture film production; production of video cassettes; production of video and television shows; rental of cinema films; rental of motion pictures; rental of video cassettes and DVDs; television entertainment, namely entertainment in the nature of on-going programs in the field of electronic games; production of television programs;  computer software game design for others; electronic game design for others; computer game programming for others; updating and maintenance of computer software games for others.” The registered mark is MAQUIS for “poseable play figures, dolls, toy action figures, and toy vehicle.”

 

The marks of the parties are similar.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

The goods and 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 and services come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

The goods of the parties are closely related, as they are all involved in toys and playthings.  Thus the consumers are likely to believe that the goods emanate from the same source.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

The applicant should also note the following additional ground for refusal.

Application Not Entitled to Registration – Earlier Pending Application

The examining attorney encloses information regarding pending Application Serial No. 76091905.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue.  

 

INFORMALITIES

 

Status and Information

If the applicant has access to the internet, current status and status date information is available on our website at www.uspto.gov.  The website provides several searchable databases, as well as general information about trademarks.

 If the applicant does not have internet access, current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

Zachary R Bello

/Zachary R Bello/

Trademark Attorney

Law Office 111

(703) 308-9111 ext 409

ecom111@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.