Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

 

I.   INTRODUCTION

 

Applicant has appealed the Trademark Examining Attorney’s final refusal to register the proposed mark, “MAXIMO CONCEPTS” in standard characters for “Television home console game accessories, portable electronic console game accessories and computer game accessories, namely, joysticks, game controllers, cases, namely, game protective cases and gaming accessory carrying cases, video screen and hand-held guards, USB cables, car chargers, AC adapters, steering wheels for video games, gel skins, battery packs, FM transmitters, headphones, extension cables and dancing mats” under Section 2(d) of the Trademark Act, as amended, 15 U.S.C. 1052(d).  The Section 2(d) refusal was issued on the basis that the applicant’s mark, as applied to the applicant’s goods, so resembles the marks “MAXIMO GHOSTS TO GLORY” (Registration No. 2633190 in typed form) for “Computer game software; Computer game cartridges; Computer game cassettes; Computer game discs; Computer game tapes; Video game cartridges; Video game machines for use with television receivers” and “MAXIMO VS ARMY OF ZIN” (Registration No. 2978772 in typed form) for “Computer game software, computer game cartridges, computer game cassettes, computer game discs, computer game tapes, video game cartridges, video game machines for use with television receivers, downloadable game software and downloadable computer games” that it is likely to cause confusion, or to cause mistake, or to deceive.  Both of the registered marks share common ownership.

 

II.   FACTS

 

On August 18, 2006, the present application was filed to register the above mark for “Television home console game accessories, portable electronic console game accessories and computer game accessories, namely, joysticks, game controllers, cases, namely, game protective cases and gaming accessory carrying cases, video screen and hand-held guards, USB cables, car chargers, AC adapters, steering wheels for video games, gel skins, battery packs, FM transmitters, headphones, extension cables and dancing mats” in Class 009. 

 

On January 9, 2007, the examining attorney initially issued an Office Action refusing registration pursuant to Trademark Act Section 2(d) because of two registered marks, Registration No. 2633190 and Registration No. 2978772.  The examining attorney also enclosed information regarding pending Application Serial No. 78656474,  a requirement for clarification of the identification of goods, an acceptable specimen pursuant to Trademark Action Section 1(a), 15 U.S.C. §1051(a), a translation of the foreign wording in the mark, and a disclaimer of the word “CONCEPTS.”  

 

The applicant responded on February 22, 2007, arguing against the refusal to register under Section 2(d) of the Trademark Act, indicating that it had filed a formal Opposition with the U.S. Trademark Trial and Appeal Board with respect to the cited prior pending Application, amending the identification of goods, submitting a specimen and providing a translation of the foreign wording in the mark and a disclaimer of the word “concepts.”

 

On April 16, 2007, the examining attorney issued a subsequent Office Action noting that the mark differed on the drawing and specimen because the word “CONCEPTS” was not included in the proposed mark on the specimen, and maintaining the refusals issued under Section 2(d) and the prior pending application. 

 

The applicant’s response on October 15, 2007, clarified the discrepancy between the mark on the drawing and specimen, and in addition, included an attached “Coexistence Agreement” as a result of the settlement agreement negotiated between the applicant and the owner of the prior pending Application Ser. No. 78656474.  

 

On October 30, 2007, the examining attorney withdrew the refusals based on the prior pending application in light of the coexistence agreement and the drawing-specimen discrepancy, but issued a final refusal under Section 2(d) in view of the two registered marks. 

 

After the issuance of a denial for Request for Reconsideration on April 10, 2008, this appeal ensued. The applicant filed their appeal brief on June 25, 2008. The examining attorney now submits her brief within the statutory sixty-day period.

 

III.  ISSUE

 

The issue in dispute is whether applicant’s mark MAXIMO CONCEPTS was properly refused with respect to the marks in U.S. Registration No. 2633190 and 2978772 pursuant to Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. 

 

IV.  ARGUMENT-  THERE IS A LIKELIHOOD OF CONFUSION BETWEEN THE MARKS AND THEIR CORRESPONDING GOODS

 

The applicant’s mark, “MAXIMO CONCEPTS,” in standard characters, is to be used for “television home console game accessories, portable electronic console game accessories and computer game accessories, namely, joysticks, game controllers, cases, namely, game protective cases and gaming carrying cases, video screen and hand-held guards, USB cables, car chargers, AC adapters, steering wheels for video games, gel skins, battery packs, FM transmitters, headphones, extension cables, and dancing mats. ”  The registrant’s mark, “MAXIMO GHOSTS TO GLORY” (Registration No. 2633190) in typed form, is used for “Computer game software; Computer game cartridges; Computer game cassettes; Computer game discs; Computer game tapes; Video game cartridges; Video game machines for use with television receivers;” and “MAXIMO VS ARMY OF ZIN” (Registration No. 2978772), in typed form, is used for “Computer game software, computer game cartridges, computer game cassettes, computer game discs, computer game tapes, video game cartridges, video game machines for use with television receivers, downloadable game software and downloadable computer games.”[1]

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered

mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to

deceive the potential consumer as to the source of the goods and/or services.  TMEP §1207.01. 

The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A.

1973), listed the principal factors to consider in determining whether there is a likelihood of

confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning

and commercial impression, and the relatedness of the goods and/or services.  The overriding

concern is to prevent buyer confusion as to the source of the goods and/or services.  In re Shell Oil

Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt as to the

existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper

Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill

Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).  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.

 

A.        THE MARKS ARE SIMILAR SO AS TO CAUSE CONFUSION

 

Notably, the applicant does not dispute that applicant’s mark, “MAXIMO CONCEPTS,” is similar in connotation and commercial impression to registrant’s marks, “MAXIMO GHOSTS TO GLORY” and “MAXIMO VS ARMY OF ZIN.”  Rather, applicant asserts that its mark “does not pose any practical tendency or likelihood of any realistic marketplace confusion” because “each of both of the two trademarked product registrations is principally but a multi-word titled game-story cartridge-type product.”  See Appeal Brief, pg. 3. 

 

As a general matter, consumers are more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).  In addition, one feature of a mark may be recognized as more significant in creating a commercial impression. and 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).  All the marks share the first and dominant term, MAXIMO.   The differences are in the wording that follows the word “MAXIMO.”  With respect to registrant’s marks, both marks are constructed with the word “MAXIMO” followed by words that designate a “theme” of the computer games.  With respect to applicant’s mark, the word “MAXIMO” is followed by the disclaimed word “CONCEPTS.”  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.  Disclaimed matter is typically less significant or less dominant when comparing marks.  See In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  In this case, the word “concepts” is disclaimed matter, and as such, is less significant for purposes of a Section 2(d) analysis.    

 

Notably, the word “MAXIMO” is not only the first word in all the marks, but the most dominant visually as presented by the applicant in the specimens of record.[2]  See TICRS incoming 2/22/07.  In applicant’s mark, the word MAXIMO is dominant in appearance because it is in large stylized font with the additional word “CONCEPTS” almost indiscernible and superimposed in tiny letters on top of the word ‘MAXIMO.’  Indeed, the word “concepts” is so small and insignificant in the applicant’s specimen, that it served as the basis for the refusal issued on April 16, 2007, because the examining attorney could not see the word “concepts” on the specimen.  Please also note that the registrant showed use in its respective registrations in a similar manner where the term MAXIMO is much larger than the other wording.  The specimen for MAXIMO GHOSTS TO GLORY (Registration No. 2633190) displays the word MAXIMO in large font standing alone on one line, in all capital letters, with the words ‘GHOSTS TO GLORY’ in much smaller font with only the first letter of each word capitalized.  See specimen submitted on April 3, 2008.    Similarly, the mark MAXIMO VS ARMY OF ZIN (Registration No. 2978772) displays the word “MAXIMO in large capital letters standing alone on one line with the letters VS and ARMY OF ZIN in slightly smaller font underneath.  Here, the word MAXIMO is also more prominent because the colors are lighter (a combination of white and light grey) whereas the colors of the VS ARMY OF ZIN are darker and blend into the overall colors of the background design.  See specimen submitted April 18, 2005.  Thus, the specimens in all three marks as presented by the applicant and registrant, display the word MAXIMO as the most prominent and significant portion of the marks.

  

Considering the above, the marks of the parties are sufficiently similar to create a likelihood of confusion under Section 2(d) of the Trademark Act. 

 

B.        THE GOODS OF THE PARTIES ARE CLOSELY RELATED

 

The applicant’s goods, namely, “Television home console game accessories, portable electronic console game accessories and computer game accessories, namely, joysticks, game controllers, cases, namely, game protective cases and gaming accessory carrying cases, video screen and hand-held guards, USB cables, car chargers, AC adapters, steering wheels for video games, gel skins, battery packs, FM transmitters, headphones, extension cables and dancing mats,” are closely related to, and are complementary to registrant’s goods, “Computer game software; Computer game cartridges; Computer game cassettes; Computer game discs; Computer game tapes; Video game cartridges; Video game machines for use with television receivers” and “Computer game software, computer game cartridges, computer game cassettes, computer game discs, computer game tapes, video game cartridges, video game machines for use with television receivers, downloadable game software and downloadable computer games” because they are complementary goods that are often used together, travel through the same channels of trade to the same classes of purchasers and are often purchased in the same shopping trip.   See previously attached third party registrations and Internet evidence submitted on January 9, 2007 and October 30, 2007 by the examining attorney demonstrating relatedness of these complementary goods. 

 

The applicant does not address or dispute the complementary nature of the goods at issue.  Rather, the applicant maintains (1) that the “software game-titles business-market segment of the registrant” is unrelated to the computer control peripheral hardware accessories business-market segment of applicant; (2) the registrant Capcom “does not currently use its pertinent two trademarked game-titles among Capcom’s retail repertoire of 80 software game-titles marketed in the U.S.A.” and (3) on December 6, 2006, the Trademark Office cleared the application for a “MAXIMO” (former cited pending Application Serial No. 78656474, now Registration No. 3415714) for consumer electronic and telecommunications accessories in Class 009 despite the  two cited Capcom registrations.  The examining attorney respectfully disagrees with these arguments as evidence that there is no likelihood of confusion. 

 

First, computer game accessories and computer games are highly related and complementary goods and are not “unrelated business-market segments” as applicant asserts.  The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).  

 

Moreover, the Trademark Trial and Appeal Board has held that computer hardware products are so related to computer software products that their marketing under the same or similar marks may be likely to cause source confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  In re Emulex Corporation, 6 USPQ2d 1312 (TTAB 1987) (JAVELIN for computer peripheral software storage unit held likely to be confused with JAVELIN for “prerecorded computer programs in machine readable form”); In re ITE/Communications, Inc., 5 USPQ2d 1457 (TTAB 1987) (likelihood of confusion found for DATA STAR used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (likelihood of confusion found in connection with CONCURRENT PC-DOS and CONCURRENT TECHNOLOGIES CORPORATION for “printed electronic circuit boards”); In re Epic Systems Corp., 228 USPQ 213 (TTAB 1985) (likelihood of confusion between EPIC for computer software for use in health care facilities and EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Graphics Technology Corp., 222 USPQ 179 (TTAB 1984) (AGILE for computer programs held likely to be confused with AGILE for computer data terminals); In re Compagnie Internationale Pour L’Informatique-Cii Honeywell Bull, 223 USPQ 363 (TTAB 1984) (QUESTAR for computer hardware held likely to be confused with QUESTAN for computer programs); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (Y NET for computer hardware found likely to be confused with XYNET for computer software when channels of trade are unlimited by identification of goods in both application and registration); Alpha Industries, Inc. v. Alpha Microsystems, 220 USPQ 67 (TTAB 1983) (ALPHA MICRO for digital computer equipment and programs held likely to be confused with ALPHA MICROWAVE for microwave components and sub assemblies); See Octocom Systems Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) (affirming TTAB decision on summary judgment that found computer modems and computer programs highly related); Cf. In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (there is no “per se” rule for determining likelihood of confusion of marks in connection with software and hardware). 

 

In addition, the examining attorney provided numerous third party registrations showing the same or similar goods as those of the applicant and registrant under the same mark, as well as Internet print-outs demonstrating that computer games and accessories are not separate business segments, but are often provided by the same source.  For example, Atari® and Nintendo® provide video games as well as numerous video game accessories.  See attached evidence submitted October 30, 2007.

 

Second, the applicant repeatedly emphasizes registrant’s business as “game titles” using such phrasing as “the software game-titles business-market segment.”  See Appeal Brief, pg.1. While the registered marks may be the title of computer games, the registrant is not a service that provides creative titles of games, but rather, is a company that provides numerous types of computer games in Class 009 that is highly related, complementary and compatible, to the Class 009 computer game accessories of applicant.   As noted previously, applicant has not squarely addressed or disputed the complementary nature of the goods.  

 

Third, the applicant makes much of the submitted “Sasson Declaration” attesting to the “marketplace realities” of the “merchandise fields” of applicant and registrant as a basis to show no realistic likelihood of consumer confusion as to the source or origin of applicant’s mark as compared to registrant’s two “software game-title marks and claimed goods.”  See Appeal Brief, pg. 1 and 3.  In addition, applicant notes that the Sasson Declaration reflects that the registrant Capcom, has not used either of its “two multi-word game title marks” in the marketplace on goods indicated in the registration.  See Appeal Brief, pg. 3.  However, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).  Evidence that constitutes a collateral attack on a cited registration, such as statements about a registrant’s nonuse of its mark, is not relevant to a likelihood of confusion determination in ex parte examination.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration. 

 

Furthermore, please note that this declaration derives from the Chief Operating Office and Vice President of Production and Marketing for the applicant.  The declarant therefore lacks credibility as to any statements made in regard to the case at hand.

 

Fourth, with respect to applicant’s assertion that there is no evidence of any actual confusion with registrant’s mark, 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, 1026-27 (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). 

 

Fifth, applicant’s reliance on the registration of another MAXIMO mark (former cited pending Application Serial No. 78656474, now Registration No. 3415714) for consumer electronic and telecommunications accessories, despite the Capcom registrations, as proof of the absence of any likelihood of confusion, is misplaced.  It is well-settled that prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office.  Each case is decided on its own facts, and each mark stands on its own merits.  AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).  Moreover, the argument that the Trademark Trial and Appeal Board should follow in lock-step with permitting confusingly similar marks on the register seems counterproductive to the basic principals of the Trademark Mark Act, this being to protect the prior registrant and to avoid confusion as to source.  The existence of confusingly similar marks on the register should not aid an applicant to register yet another mark likely to generate confusion.  See AMF Incorporated v. American Leisure Products, Inc.  177 U.S.P.Q. 268, 269, 474 F. 2d 1403 (CCPA 1973).  In addition, it is important to note that the goods in the prior pending application (now Reg. No. 3415714) are not related and complementary goods to those of the registrant, as in the instant case, because the goods in that registration are indicated as consumer electronic and telecommunications accessories consisting of goods such as connector hubs, USB, Ethernet and FireWire adapters, memory card readers, etc.  In contrast, the applicant’s goods in the instant case are clearly denoted as computer game accessories and serve as complementary goods for computer games. 

 

Even if the Court feels that there are differences in the appearance of the marks, if the goods of the respective parties are closely related and complementary goods, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

V.  CONCLUSION

 

The applicant’s mark, MAXIMO CONCEPTS, contains the same dominant feature, namely, MAXIMO, as the registered marks, MAXIMO GHOSTS TO GLORY and MAXIMO VS ARMY OF ZIN.  The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  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 Nat’l 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); see TMEP §1207.01(b)(viii), (c)(ii).  Since the term MAXIMO is very significant in creating a commercial impression, the marks are highly similar in connotation and commercial impression.  In addition, the goods at issue, computer games and computer game accessories, are highly related and complementary goods that would be sold in the same channels of trade and marketed to the same consumers. 

 

For the foregoing reasons, the examining attorney respectfully requests that the Trademark Trial and Appeal Board AFFIRM the refusal to register the proposed mark under Section 2(d) of the Trademark Act.

                                   

Respectfully submitted,

 

                                    /cglasser/

Caryn Glasser

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571) 270-2517

 

Andrew Lawrence

Managing Attorney

Law Office - 108

 

 

 

Registrant’s specimen for 2633190

 

Registrant’s specimen for 2978772