UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79196751
MARK: IOI
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Io-Interactive A/S
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1320282
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Trademark Act Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4799093 and 3246719. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under applicant’s and registrant’s marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP §1207.01(b). The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Applicant’s mark is IOI in a heavily stylized font. The mark in U.S. Reg. No. 4799093 is IOI WORKS, in standard character form. The mark in U.S. Reg. No. 3246719 is IOI PAY, also in standard character form. Each of the marks shares the identical literal element “IOI.” Applicant’s does not feature any additional wording. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark. Further, “IOI” in each of the registered marks is in standard character form. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not 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 Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Similarity of the Goods/Services
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be related in some manner or the conditions surrounding their marketing be such that they will be encountered by the same consumers under circumstances that would lead to the mistaken belief that the originate from the same source. Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584, 1597 (TTAB 2012); TMEP §1207.01(a)(i); see On-line Careline Inc. v. Am. Online Inc., 229 F.3d at 1086, 56 USPQ2d at 1475; In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Applicant’s goods and services are as follows:
Class 9: Computers; computer software; entertainment computer programs; computer games; computer game software; electronically delivered games; computer game discs, downloadable computer game software; computer game software downloadable from a global computer network; interactive multimedia computer games programs; downloadable electronic game software for use on portable electronic devices such as mobile and cellular phones, laptops, handheld computers, and tablet PCs; software for interactive video games and interactive computer games and interactive video games by means of electronic networks, wireless networks and computer networks.
Class 35: Advertising; business management; business administration; office functions; retail and wholesale services (also via the Internet) with computers, computer software, entertainment computer programs, computer games, computer game software, electronically delivered games, computer game discs; retail and wholesale services (also via the Internet) with downloadable computer game software, computer game software downloadable from a global computer network, interactive multimedia computer games programs, downloadable electronic game software for use on portable electronic devices such as mobile and cellular phones, laptops, handheld computers and tablet PCs.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment provided via the internet; entertainment provided via mobile or cellular telephone and/or other wireless devices; on-line game services; computer and video game services provided via electronic electronic, wireless and computer networks; computer and video game services provided via mobile and cellular phones and other wireless devices; providing a continuing computer game broadcast over television, satellite, audio, and video media; entertainment in the nature of musical performances, musical videos, film clips, photographs and other multimedia entertainment via a website; creation, production and distribution of films, videos, animation, and computer generated images; providing continuing shows distributed over electronic media, including global and local area computer networks; entertainment in the nature of competitions in the field of computer and video games and entertainment trivia; providing multi-player matching services; providing online entertainment in the nature of multiplayer tournaments; fan club services in the nature of entertainment; organisation of quizzes; provision of news, information and programs in the field of entertainment regarding interactive computer game software; provision of news, information and programs in the field of entertainment regarding motion pictures and computer and video games via an electronic network; production and distribution of motion pictures; providing news and information in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer and video games; production of film, television and radio programs, transmissions, film and television entertainment; electronic publications (not downloadable)
The goods in U.S. Reg. No. 4799093 are for “Carrying cases for cell phones; Carrying cases for mobile computers; Cases for mobile phones; Cell phone cases; Computer carrying cases; Laptop carrying cases; Notebook computer carrying cases; Protective carrying cases for portable music players, namely, MP3 players; Protective carrying cases specially adapted for global positioning system (GPS) apparatus; Protective carrying cases specially adapted for personal digital assistants (PDA); Protective carrying cases specially adapted for video game consoles for use with an external display screen or monitor; Protective covers and cases for cell phones, laptops and portable media players; Smartphone mounts; Earphones and headphones; Wearable digital electronic devices comprised primarily of software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers and also featuring a wristwatch; USB cables for cellphones; Cell phone battery chargers; SIM cards; Cell phone battery chargers for use in vehicles.”
The services in U.S. Reg. No. 3246719 are for “Providing temporary use of non-downloadable computer software that enables employers to submit and manage their payroll and offers an electronic report archive that stores payroll information that can be reviewed online or printed as needed and which further allows for human resource information management, benefit administration, employee/employer self-service, payroll processing, and the calculating, filing, depositing, and reconciling of an employer's payroll taxes for all federal, state, and local authorities.”
Applicant’s identification of goods is broad enough to include the electronic devices and related software described in U.S. Reg. No. 4799093, and registrant’s wide variety of accessory goods may be the type of goods used in connection with registrant’s computer goods. Further, applicant’s identification of goods is also broad to include the more narrowly defined software in the services in U.S. Reg. No. 3246719.
The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). Because the marks are similar in sound, appearance, and commercial impression, and applicant’s identification of goods and services is broad enough to include goods and services in the cited registration, confusion is likely, and registration must be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Identification of Goods and Services Unacceptable
Class 9: “Computers; computer software for {indicate function or purpose of the software and if field or industry specific, must be downloadable software or recorded on computer media}; entertainment computer programs, namely, {describe function and purpose of the program in greater detail}; computer game programs; computer game software; electronically delivered games, namely, downloadable computer game programs {suggested for clarity, must be proper in Class 9}; computer game discs, downloadable computer game software; computer game software downloadable from a global computer network; interactive multimedia computer games programs; downloadable electronic game software for use on portable electronic devices such as mobile and cellular phones, laptops, handheld computers, and tablet PCs; software for interactive video games and interactive computer games and interactive video games by means of electronic networks, wireless networks and computer networks”
Class 35: “Advertising; business management; business administration; providing {suggested for
clarity} office functions; retail and wholesale services (also via the Internet) retail and wholesale store services, and online retail and wholesale
store services, all featuring computers, computer software, entertainment computer programs, computer games, computer game software, electronically delivered games, computer game discs; retail and wholesale services (also via the Internet) retail and wholesale store services, and online retail and wholesale store services, all featuring with
downloadable computer game software, computer game software downloadable from a global computer network, interactive multimedia computer games programs, downloadable electronic game software for use
on portable electronic devices such as mobile and cellular phones, laptops, handheld computers and tablet PCs”
Class 41: “Education services, namely, {indicate nature of the education services, how they are
rendered, and the subject matter, e.g., providing classes, workshops in the field of gaming}; providing of training {in the field of [indicate subject matter or field]};
entertainment, namely, {indicate nature of the entertainment services rendered}; sporting and cultural activities, namely, {indicate nature of the activities
provided, and how they are rendered}; entertainment provided via the internet, namely, {indicate nature of the entertainment services rendered}; entertainment provided via
mobile or cellular telephone and/or other wireless devices, namely, {indicate nature of the entertainment services rendered}; on-line game services, namely, providing online computer games {suggested for clarity}; computer and video game services provided via electronic electronic {duplicate
wording}, wireless and computer networks, namely, providing online computer games {suggested for clarity}; computer and video game services provided via
mobile and cellular phones and other wireless devices, namely, providing online computer games {suggested for clarity}; providing a continuing computer game broadcast over
television, satellite, audio, and video media; entertainment in the nature of musical performances, musical videos, film clips, photographs and other multimedia entertainment via a website; creation,
production and distribution of films, videos, animation, and computer generated images; providing continuing shows in the field of {indicate subject matter or
field} distributed over electronic media, including global and local area computer networks; entertainment in the nature of competitions in the field of computer and video games and entertainment
trivia; providing multi-player matching services in the field of online video games; providing online entertainment in the nature of multiplayer tournaments in
the field of online video games; fan club services in the nature of entertainment; conducting live entertainment in the nature of games featuring quizzes {rewritten for clarity, otherwise vague}; provision of news, information and programs in the field of entertainment regarding interactive computer game software; provision of news, information and programs in the field of entertainment regarding motion pictures and computer and video games via an electronic network; production and
distribution of motion pictures; providing news and information in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer
and video games; production of film, television and radio programs, transmissions, film and television entertainment; providing non-downloadable electronic publications in the nature
of {indicate format of publication, e.g., magazines, newsletters} in the field of video game entertainment {suggested for clarity, subject matter required}”
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Description Amendment Required – Description Vague
Therefore, applicant must provide a more detailed description of the applied-for mark. The following is suggested:
The mark consists of the heavily stylized letters “IOI”. Each letter “I” has a triangular notch cut into the letter towards the top, and the letter “O” is in the shape of a diamond with flattened corners.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 102
571-272-8844
jordan.baker@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.