UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/684291
MARK: NOTHING
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Capper, David G.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on July 30th, 2008. The applicant (1) argued against the refusal under Section 2(d) of the Trademark Act, (2) amended the identification of goods and (3) provided a standard character claim. Only No. 3 is fully acceptable.
2(d) Refusal – Likelihood of Confusion – Final Action
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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
The applicant’s mark consists of the wording “NOTHING”. The registrant’s mark consists of the wording “NOTHING” in stylized form. The marks have the identical spelling, pronunciation and commercial connotation.
The applicant argues that there is no similarity in the marks because the applicant’s mark is in standard character form and the registrant’s mark is in stylized form, containing a large letter “O” within the term “NOTHING”. The examiner is not persuaded by this argument. The fact remains that both marks comprise the identical term: “NOTHING”. The spelling is identical, the pronunciation is identical and the meaning of the terms is identical. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display. TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a). Thus, a mark presented in stylized characters or otherwise in special form will not generally avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
Consumers will still refer to both the applicant’s goods and the registrant’s goods as “NOTHING” and will hear that term in connection with the goods regardless of the large letter “O” in the registrant’s mark. At the very least, the marks are identical in sound, which is sufficient for a refusal under Section 2(d) of the Trademark Act.
Comparison of the Goods
The applicant’s goods are identified as “video and computer game programs, game cartridges, game controllers, interactive tools and other game accessories; cd-roms, and other computer readable storage medium, all for use with personal video game counsels, computers and arcade machines; literature and instructional materials sold therewith; and downloadable video and computer game software” in Class 9 and “action skill games, equipment sold as unit for playing dancing games, hand-held unit for playing electronic games, hand-held unit for playing video games, equipment sold as a unit for electronic games other than those adapted for use with television receivers only and which use hands-free or contact-free controllers” in Class 28. The registrant’s goods are identified as “board games” in Class 28.
The applicant argues there is no likelihood of confusion because the goods are “widely divergent”. It is well established that the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01.
The goods consist of toys in the nature of board games, computer games and electronic games. While the applicant’s goods are more technology based than the registrant’s board games, such items still travel in the identical channels of trade and target the same consumers: people who want to play games. There is no age limit or any other limitations noted in the identifications. As such, the examiner must conclude that the goods are like those found in any toy and game section of retail stores.
Many classic board games are now available in electronic forms as well as on computer software or DVDs. The examining attorney conducted an online search via the search engine Google® on August 21, 2008 and found many such games including Scrabble®, Boggle®, Battleship® and Uno®. See attachments “scrabble,” “boggle”, “battle1-2” and “uno1-2”.
The marks are similar in sound, appearance and connotation. The goods of the parties are related because the evidence clearly shows that board games are now often available in electronic forms and are produced by the same manufacturers. Moreover, the goods travel in the identical trade channels and target the same consumers leading to the erroneous conclusion that the goods emanate from the same source. For the reasons cited, the examiner finds there is a likelihood of confusion and the refusal to registration under Section 2(d) is maintained and made FINAL.
Requirement for Definite Identification – Final Action
Class 9:
video and computer game programs, game cartridges, and game controllers; interactive tools and other game accessories, namely, [specify items by common commercial name e.g. joysticks, control floor pads or mats etc.]; pre-recorded cd-roms, DVDs, video cassettes, videotapes, and digital discs all featuring games for use with personal video game consoles and computers and accompanying literature and instructional materials sold therewith; downloadable video and computer game software.
Class 28:
action skill games, equipment sold as unit for playing dancing games, hand-held unit for playing electronic games, hand-held unit for playing video games, equipment sold as a unit for electronic games other than those adapted for use with television receivers only and which use hands-free or contact-free controllers; arcade games.
Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Options
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Karen Bracey/
Examining Attorney
Law Office 116
571-272-9132
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.