Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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. 

 

 

Serial Number  78/516064

 

FIRST OFFICE ACTION

 

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

 

Likelihood of Confusion Refusal

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2,899,426, 2,884,109 and 1,605,488 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods 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).  TMEP §§1207.01 et seq. 

 

The applicant applied to register the mark SHADOWRUN for “computer programs, namely game software for use on computers and video game players.”  Registration No. 2,899,426 is SHADOWRUN and design for “brochures and booklets relating to games; strategy guide books and magazines relating to games; printed game instruction sheets; printed scoring sheets; posters; comic books and novels.”  Registration No. 2,884,109 is SHADOWRUN and design for “game equipment, namely, miniature toy figurines and role playing equipment in the nature of game book manuals sold as a unit; collectible toy figurines; role playing games and game pieces and accessories therefore, namely, toy buildings and toy vehicles.”  Registration No. 1,605,488 is SHADOWRUN for “equipment sold as a unit for playing board games, role playing games” and “novels relating to science fiction board and role-playing games.”  The applicant should note that the cited registrations currently are owned by the same registrant.

 

                Similarity of the Marks

 

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).

 

Here, the literal portion of each of the marks is the dominant term SHADOWRUN.  The addition of a design element to Registration Nos. 2,884,109 and 2,899,426 does not obviate the similarity in appearance, sound, connotation and overall commercial impression of the applicant’s mark and each of the registered marks.

 

                Comparison of Goods

 

The goods 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 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).  TMEP §1207.01(a)(i). 

 

Here, the applicant has computer game software.  The registrant has game strategy guide books, brochures and booklets relating to games, printed game instructions, toy figurines, role playing games, equipment for board games and novels relating to board and role playing games.  The good of the parties are related in that they are commonly used and sold in conjunction with one another.  Strategy guides, game instruction, figurines or toy figures and equipment for playing role playing or board games are commonly based on the same game or story as computer game software.  The applicant should note the attached sampling of registration from this Office’s database in which a single party uses its mark for both computer game software and strategy guides, instructions, toy figures, role playing games or board games.  These registrations show that it is common for the goods of the applicant and for goods of the same type as those of the registrant to be marketed in the same channels of trade, to the same purchasers through use of a single mark.  Thus, because of the similarity in appearance, sound, connotation and overall commercial impression of the applicant’s mark and the registered marks, and because of the relatedness of the applicant’s and registrant’s goods, purchasers encountering those goods are likely to mistakenly believe they are provided by a common source.  Accordingly, registration is refused.

 

                Ownership of the Cited Registrations

 

If the registered marks cited have been assigned to the applicant, the applicant is responsible for proving their ownership.  TMEP §812.01.  The applicant has the burden of proving ownership of a cited registration.  The Office’s automated search system may not reflect the recordation of changes of ownership in the Assignment Services Division.  Therefore, if an applicant does not assert ownership of a pertinent registration in an application when it is filed, it is possible that the registration may be cited as a reference under §2(d) even though it is owned by the applicant.  If so, the applicant must:  (1) provide the reel and frame numbers where documents evidencing the chain of title from the registrant of record to the applicant have been recorded;[1] (2) submit copies of documents evidencing the chain of title; or (3) submit an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates).  TMEP §812.01. See also 37 C.F.R. §3.73; TMEP §502.  Furthermore, the applicant should note TMEP §§1201.07 et seq. regarding related companies, likelihood of confusion and a showing of unity of control.

 

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.

 

Prior Pending Application

 

In addition, information regarding pending Application Serial No. 78-208506 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.

 

Informality

 

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

 

Prior Registration Will Not Be Printed if it is Not Renewed

 

The applicant has claimed ownership of Registration No. 1,876,015.  A renewal for this registration was due on January 24, 2005.  Thus, if the applicant does not file a renewal for this registration and it is subsequently cancelled, the applicant’s claim of ownership will not be printed on any registration which may issue from this application.  Only claims of ownership of live registrations are printed.  37 C.F.R. §2.36; TMEP §812.

 

Responding to this Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response. 

 

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

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(571) 272-9441

LO Fax (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.