UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/648880

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2735725.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.  The applicant’s mark is “GALAXY SPACE POKER” for “the game of poker where an element of the game is being performed in space.” The registrant’s mark is “GALAXY ON LINE” for “entertainment services, namely, providing interactive games on line over the global computer network.”

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.

 

Similarities of the Marks

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

 

Here, applicant’s mark shares the common term “GALAXY” with registrant’s mark.  The marks are compared in their entireties under a Section 2(d) analysis.  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 National 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); TMEP §1207.01(b)(viii).  The word “GALAXY” is the dominant feature of both applicant’s and registrant’s marks.  The terms after “GALAXY” in the registrant’s mark, “SPACE POKER,” are descriptive of a characteristic and feature of applicant’s goods. Similarly, in registrant’s mark, the wording after “GALAXY,” “ON LINE,” describes a feature of applicant’s services and is disclaimed.  Therefore, the dominant portion of both marks is “GALAXY,” which is identical in sound, appearance, and meaning.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

 

Applicant’s mark is confusingly similar with registrant’s mark based on similarities in sound, meaning, and appearance.

 

Relatedness of the Goods and Services

The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods and/or services identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services.  In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-5 (TTAB 1980).

 

Here, applicant’s goods are related to registrant’s services because poker is a type of game that can be provided on line.  Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the registrant’s goods and/or services is very broad, it is presumed that the registration encompasses all goods and/or services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii). 

 

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

 

Applicant Not Entitled to Register Based on Prior Pending Application

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Information regarding pending Application Serial No. 78666055 is enclosed.  The filing date of the referenced application precedes 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 registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements.

 

Identification of Goods

Applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).  The identification of goods is indefinite because: it is unclear whether applicant is applying to register its mark for goods, services or goods and services.  Applicant must clarify the identification of goods by indicating (1) the specific type of game, e.g. card game, and (2) the method of transmitting the game, e.g. board game, video game, internet game.

 

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

 

“computer game software for playing poker where the act of dealing the cards and taking bets is performed in space by a computer” in International Class 9; or

 

“card game, namely, poker where the act of dealing the cards and taking bets is performed in space by a computer” in International Class 9; or

 

“organizing and providing on-line poker games for others where the act of dealing the cards and taking bets is performed in space by a computer” in International Class 41; or

 

“entertainment services, namely, providing interactive poker games where cards are dealt and bets are placed by others via a global computer network with a  computer located in a vessel in outer space” in International Class 41.  TMEP §1402.01.

 

Please note that, while the identification of goods or services may be amended to clarify or limit the goods or services, adding to the goods or services or broadening the scope of the goods or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods or services that are not within the scope of the goods or services set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Classification

Applicant classified the goods “the game of poker where an element of the game is being performed in space” in International Class 28; however, depending on the suggested amendment of the goods and/or services that applicant adopts, the correct classification is International Class 9 and/or 41.  Applicant must either delete these goods and/or services or add International Class 9 and/or 41 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401.04(b).

 

Multiple Class Application

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Date of Signing of Declaration Omitted

Applicant must specify the date the application declaration was signed.  TMEP §804.01(b).

 

Standard Character Claim

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

Disclaimer

Applicant must disclaim the descriptive wording “SPACE POKER” apart from the mark as shown because it merely describes a characteristic and feature of the goods or services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The term “SPACE” is merely descriptive of the intended location for the goods.  “POKER” identifies the actual goods applicant will provide, and appears to be generic as applied to the goods.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “SPACE POKER” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

/Megan K. Whitney/

Trademark Examining Attorney

Law Office 113

Phone: (571) 272-8954

Fax: (571) 273-8954

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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

 

PRIOR REGISTRATION:

Mark
        GALAXY ON LINE
Goods and Services
        IC 041. US 100 101 107. G & S: Entertainment services, namely, providing interactive games on line over the global computer network. FIRST USE: 19971201. FIRST USE IN COMMERCE: 19971201
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75398666
Filing Date
        December 2, 1997
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        April 22, 2003
Registration Number
        2735725
Registration Date
        July 15, 2003
Owner Name and Address
        (REGISTRANT) EGAMES, INC. CORPORATION PENNSYLVANIA 2000 CABOT BOULEVARD WEST SUITE 110 LANGHORNE PENNSYLVANIA 190471811
Assignment Recorded
        ASSIGNMENT RECORDED
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ON LINE" APART FROM THE MARK AS SHOWN
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE

 

 

PRIOR PENDING APPLICATION:

Mark
        GALAXY
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Mobile computer games. FIRST USE: 20021201. FIRST USE IN COMMERCE: 20021201
Standard Characters Claimed
        STANDARD CHARACTERS CLAIMED
Mark Drawing Code
        (4) STANDARD CHARACTER MARK
Serial Number
        78666055
Filing Date
        July 8, 2005
Current Filing Basis
        1A
Original Filing Basis
        1A
Owner Name and Address
        (APPLICANT) Webvisia LLC CORPORATION CALIFORNIA 1250 Pine St, Ste 305 Walnut Creek CALIFORNIA 94596
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE