Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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

 

THIS IS A FINAL ACTION

 

This letter responds to applicant’s communication filed on October 25, 2006.  The following requirements have been satisfied and are now withdrawn:  (1) definite identification of services because applicant’s amended identification is acceptable, (2) date the application declaration was signed because applicant provided the signature date, (3) standard character claim because applicant submitted one, and (4) disclaimer of the descriptive wording “SPACE POKER,” which applicant submitted in its response.  TMEP §714.04. 

 

Prior pending Application Serial No. 78666055 was cited as a potential conflict with applicant’s proposed mark, but is withdrawn because the prior pending application has abandoned.  However, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No. 2735725 for the reasons set forth below.  37 C.F.R. §2.64(a).

 

FINAL REFUSAL UNDER SECTION 2(d)—LIKELIHOOD OF CONFUSION

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2735725 as to be likely, when used in conjunction with the identified services, to cause confusion, or to cause mistake, or to deceive.

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

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 applicant’s mark is the standard character mark “GALAXY SPACE POKER,” with the wording “SPACE POKER” disclaimed.  The registrant’s mark is the typed drawing “GALAXY ON LINE,” with the wording “ON LINE” disclaimed.  As explained in the prior Office action, 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).  In this case, the word “GALAXY” is dominant in both marks.

The applicant asserts that a dominant feature in a mark is just one factor to consider when determining similarity of the marks and cites supporting caselaw.  See Response.  However, That determination does not circumvent the first step of the analysis – the examining attorney’s determination that the marks are highly similar when compared in their entireties:

[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.  On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.

 In re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985).

 

“GALAXY” is afforded more weight in the likelihood of confusion analysis because it is an identical term that both marks share.  Further, “it is often the first part of the mark which is most likely to be impressed upon the mind of the purchaser and remembered.”  Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988). 

 

Applicant essentially concedes that “GALAXY” is dominant in its mark by agreeing to disclaim the descriptive wording “SPACE POKER.”  See Response p. 2.  Disclaimed matter is typically less significant or less dominant when comparing marks.  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.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).

 

Applicant contends that a side-by-side comparison of the marks reveals that the “commercial impression favors the applicant.”  See Response p. 5.  Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the services they identify come 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.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); 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).  Here, the marks create a highly similar commercial impression.  Consumers are likely to view “GALAXY ON LINE” s the house mark for on-line games and “GALAXY SPACE POKER” as one of the specific on-line games the registrant provides.

 

Therefore, applicant’s arguments regarding dissimilarity of the marks are not persuasive and the Examining Attorney maintains that similarity of the marks—the first element of the likelihood of confusion analysis—is clearly established here.

 

Relatedness of the Services

Applicant’s services—“organizing and providing on-line poker games where part of the game of poker is performed in space”—are highly related to registrant’s services—“entertainment services, namely, providing interactive games on line over the global computer network.”

 

Applicant argues that is services differ from registrant’s services “[s]ince the Applicant’s game is being partially conducted in space, there is virtually no chance that there could be confusion between a typical on-line game and Applicant’s game i[n] space.”  See Response p. 6.    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 services is very broad, it is presumed that the registration encompasses all 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).  In this case, applicant is providing a specific type of interactive on-line game—poker games—and registrant provides all interactive on-line games.  It is presumed that the registrant’s broad identification of services includes applicant’s specific services.

 

Therefore, applicant’s argument that determination of likelihood of confusion is based upon actual confusion between applicant’s actual services and registrant’s actual services is unfounded.  The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion.  It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990), and cases cited therein.  See also In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984), wherein the Board stated as follows:

 

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and registrant has no chance to be heard (at least in the absence of a consent agreement, which applicant has not submitted in this case).  Id. at 1026-1027.

 

More importantly, the fact that “Applicant’s game is being partially conducted in space” is unpersuasive because the participants in the game will not be in space.  See applicant’s identification of services and Response pp 6, 7.  Therefore, consumers may only participate in applicant’s games on-line via their computers.  The Examining Attorney notes the space element of applicant’s services, but registrant’s identification of services is broad enough to include interactive on-line games performed in space.

 

Sophistication of the Consumer

Applicant claims consumer sophistication and argues that its “customers are more likely to be sophisticated and not be confused between a typical on line game and a game that is tethered in space.”   See Response p. 7.  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.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

 

Registrant’s Failure to Use its Mark

Applicant also asserts registrant’s failure to use its mark weighs in favor of the Applicant:

[T]he mark “GALAXY ON-LINE” is not being used on the internet by the owner of the mark. 

 

The failure of the owner of the “GALAXY ON-LINE” mark to use the mark as indicated on the trademark registration rises to the level of an estoppel against the position that there could be any confusion as between the marks.  See Response pp. 8- 9.

 

Applicant’s argument that the registration owner of the cited mark(s) has abandoned its trademark is information relevant to a formal cancellation proceeding and is not appropriate matter for ex parte examination.  TMEP §1207.01(d)(iv).

Applicant’s Priority of Use

Applicant contends it “is the first in this market” to use its mark on “games that are partially played from space.” See Response p. 12.  Applicant’s claim of priority of use is not relevant to this ex parte proceeding.  In re Calgon Corp, 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).  Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate.  During ex parte prosecution, the trademark examining attorney has no authority to review or decide on matters that constitute a collateral attack on the cited registration.  TMEP §1207.01(d)(iv).

 

Conclusion

Based on similarities among the dominant portion of both marks and highly related services, a likelihood of confusion is created among consumers.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).  Therefore, the refusal under Section 2(d) is maintained and made FINAL.

 

RESPONSE GUIDELINES

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); 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) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/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.