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  76/649513

 

This letter responds to the applicant’s communication filed on October 4, 2006.

 

The applicant (1) amended the identification and classification of services; (2) submitted color claim and description statements; (3) disclaimed certain wording apart from the mark as shown; and (4) argued against the Section 2(d) refusal.  Nos. (1) through (3) are acceptable.  Further, the applicant is advised that Application Serial No. 78/666055, which previously was cited as a potential bar to registration of the applicant’s mark, has been abandoned.  Consequently, Application Serial No. 78/666055 is no longer a potential bar to registration of the applicant’s mark.

 

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. 2,735,725 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.

 

            Similarity of the Marks

 

The applicant’s mark is GALAXY BINGO (and Design), with the word “BINGO” disclaimed.  The registrant’s mark is GALAXY ON LINE (Typed), 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 marks contain the same dominant wording, namely, “GALAXY.”

 

As pointed out by the applicant, the fact that one feature of a mark may be more dominant than other features of the mark is just one factor to consider when determining similarity of marks.  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).

 

The word “GALAXY” has been given more weight in the likelihood of confusion analysis because it is the wording the 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).

 

The other wording in the marks, “BINGO” in the applicant’s mark and “ON LINE” in the registrant’s mark, is descriptive and has been disclaimed by the respective parties.  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).

 

The applicant argues that its “composite mark derives its primary and dominant feature – and commercial impression – from the design incorporating the Earth, the Sun, and the coloring in general . . .”  As explained in the prior Office action, registration of a mark in typed or standard character form means that the mark may be displayed in any lettering style.  37 C.F.R. §2.52(a).  The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant.  Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed or standard character form because the marks could be used in the same manner of display.  See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

With respect to the wording contained in the two marks, the applicant argues that “[c]ommercial impression favors the applicant.  It is instructive to compare the words side-by-side.”  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).  In this case, the marks create a highly similar commercial impression.  Consumers are likely to view GALAXY ON LINE as the house mark for on-line games and GALAXY BINGO as one of the specific on-line games provided by the registrant.

 

Having established the first element of the likelihood of confusion analysis, the next step is to determine the relatedness of the applicant’s and the registrant’s services.

 

            Relatedness of the Services

 

The applicant’s services are “Organizing and providing on-line bingo games where the act of choosing the bingo numbers is performed in space.”  The registrant’s services are “Entertainment services, namely, providing interactive games on line over the global computer network.”

 

The applicant argues that “[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.  This factor weighs in favor of the Applicant.”  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, it is presumed that the registrant’s “providing interactive games on line over the global computer network” includes the applicant’s more specific “Organizing and providing on-line bingo games where the act of choosing the bingo numbers is performed in space.”

 

It is improper to decide the issue of likelihood of confusion based upon a comparison of applicant’s actual goods [or services] with registrant’s actual goods [or services].  If registrant’s goods [or services] are broadly described in its registration so as to include types of goods [or services] which are similar to applicant’s goods [or services], then an applicant in an ex parte case cannot properly argue that, in point of fact, registrant actually uses its mark on a far more limited range of goods [or services] which range does not include goods [or services] which are similar to applicant’s goods [or services].

 

In re Trackmobile, Inc., 15 USPQ2d 1152, 1153 (TTAB 1990).

 

Further, with respect to the “choosing the bingo numbers in space” feature of the applicant’s services, people who play the applicant’s on-line bingo games will not be in space nor will they be the ones choosing the bingo numbers in space.  Their only interaction with the applicant’s services will be on-line via their computers, same as the registrant’s on-line interactive games.  While certainly a novelty, the “space” element of the applicant’s services does not have much effect on the likelihood of confusion analysis.

 

            Other Factors

 

The applicant 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.  This factor weighs in favor of the Applicant.”  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).

 

The applicant also argues that:

 

[T]here is no indication that the mark “GALAXY ON-LINE” is being used, or has ever been used, via 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.

 

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).

 

Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be 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, an applicant will not be heard on matters that constitute a collateral attack on the cited registration such as a registrant’s nonuse of the mark.  See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).

 

The marks contain the same dominant wording and are similar in sound and commercial impression.  The applicant’s services and the registrant’s services are presumed to be identical or highly related.  The similarities among the marks and the services are so great as to create a likelihood of confusion 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).

 

For the foregoing reasons, the refusal under Section 2(d) is maintained and made FINAL.

 

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).

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

 

 

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.