UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79213948
MARK: EVERYWHERE
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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: Royal Circus Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1359396
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.
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. 5024950. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and 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.
Applicant has applied to register EVERYWHERE for goods and services in International Classes 9, 16, 28, 35, 38, 41 and 42.
The registered mark is EVERYWEAR GAMES for goods and services in International Classes 9, 41 and 42.
A. Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Here, the marks share the identical sounding wording “EVERYWHERE” and “EVERYWEAR”. These terms are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv).
Even though the cited mark includes the additional term “GAMES,” this term has been disclaimed as being descriptive or generic in relations to the registrant’s goods and services. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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 at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
B. Comparison of the Goods and Services
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the parties offer identical and closely related goods and services in the same fields of computer games, video games, and gaming.
Moreover, the identification set forth in the application and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and services travel in all normal channels of trade, and are available to the same class of purchasers. As such, the goods and services would be marketed in the same channels of commerce and to the same group of consumers under circumstances that would lead the average consumer to mistakenly believe that the goods and services emanate from a common source.
Accordingly, the presence of similar marks for identical and closely related goods and services would create a likelihood of confusion in the marketplace. Thus, registration must be refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. In the identification of goods, applicant must be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as "accessories," "apparatus," "components," "devices," "equipment," "materials," "parts," "systems" or "products," such words must be followed by "namely," followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1401.05(d), 1402.03(a).
The recitation of services highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Applicant must be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "systems," "products," "concepts," or "not limited to," such wording must be followed by "namely," and a list of the specific services identified by their common commercial or generic names. See TMEP §§1401.05(d), 1402.03(a).
The identification of goods and services contains brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO's practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., "fried tofu pieces (abura-age)." Id.
Therefore, applicant must remove the brackets from the identification and incorporate any bracketed information into the description of the goods and services. Applicant may also delete the bracketed information where indicated below.
Applicant may adopt the following amended identification of goods and services suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant's goods and services. The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language. Please note required changes in bold type, strikethroughs reflecting deletions and applicant should pay particular attention to language removed by the trademark examining attorney:
International Class 009: Game software; computer and video games software; electronic game software; computer and video game programs; computer and
video game discs; video games on disc [computer software]; computer and video game cartridges; computer and video game cassettes, disks and DVDs; downloadable electronic
game programs; downloadable computer and video game programs and software; interactive computer and video game programs; interactive multimedia software for playing games; recorded computer game
software; games software for use for use with video game consoles; computer game entertainment software; interactive multimedia computer game programs; computer game
software for use with online games; memory cards for video game machines; electronic game software for mobile phones, handheld electronic devices and wireless devices; computer programs for
pre-recorded games; pre-recorded compact discs featuring games; computer hardware for games and gaming; video games [computer games] in the form of computer programs
recorded on data carriers; computer and video game software and programs downloadable from the internet; computer game software downloadable from a global computer network and wireless devices;
downloadable ______ {clarify goods, e.g. text files, video files} all featuring information relating to games and gaming in the nature of ________ {clarify
gaming, e.g. gambling, recreational game playing}; computer application software featuring games and for gaming in the nature of ________ {clarify gaming,
e.g. gambling, recreational game playing}; downloadable software in the nature of mobile applications for playing games; downloadable mobile applications
for ______ {indicate function of software, e.g. managing bank accounts, editing photos, making restaurant reservations and, if software is content- or field-specific, the content or field of
use}; application software for ______ {clarify function, e.g. enabling users to engage in} social networking services via the internet; downloadable interactive entertainment
software for playing computer and video games; downloadable electronic publications in the nature of ______ {clarify type of publications, e.g. books, magazines and newsletters}
relating to games and gaming in the nature of ________ {clarify gaming, e.g. gambling, recreational game playing}; computer software for the administration of online games and
gaming in the nature of ________ {clarify gaming, e.g. gambling, recreational game playing}; computer firmware for playing games and for
gaming in the nature of ________ {clarify gaming, e.g. gambling, recreational game playing}; firmware for _______ {clarify function in relations to computer
peripherals} computer peripherals; computers and computer hardware for games and gaming; computer game programs for arcade video game machines; computer software to enable
virtual reality viewing of environments for playing computer games; computer graphics software; graphical user interface software; interactive video game
software; interactive multimedia computer game programs; virtual reality software for _______ {indicate the function of the software, e.g. playing computer
games, pilot training, medical teaching}; virtual reality headsets; virtual reality game software; augmented reality software for _______ {indicate the function of the software,
e.g. playing computer games, pilot training, medical teaching}; augmented reality software for creating maps; augmented reality software for use in mobile devices for _______
{indicate the function of the software, e.g. playing computer games, pilot training, creating maps}; augmented reality software for use in mobile devices for integrating electronic data with real
world environments for the purpose of _______ {specify purpose of software, e.g. locating vehicles, creating maps, playing computer games and, if software is content- or
field-specific, the content or field of use}; optical viewing screens, namely, ______ {clarify goods}; computer programs for providing an all-around view of virtual
environments for _______ {indicate the function of the software, e.g. playing computer games, pilot training, medical teaching}; video processors for providing an all-around view
of virtual environments; video display monitors for providing an all-around view of virtual environments; three dimensional viewers, namely, ______ {clarify
goods, e.g. 3D spectacles, 3D digital photograph viewers}; three dimensional picture manipulators, namely, ______ {clarify goods}; audio-visual instruments and apparatus, namely, ______ {clarify goods, e.g. multimedia projectors, computer screens} and audiovisual receivers; 3D glasses and
spectacles; 3D spectacles for television receivers; computer software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication
networks
International Class 016: Printed materials, namely, manuals, pamphlets, booklets, books, magazines, posters and guides in the field of computer and video games
International Class 028: Computer game apparatus, namely, video game machines, apparatus for electronic games adapted for use with an external display screen or monitor, electronic games consoles adapted for use with an external display screen or monitor, joysticks, joypads and gamepads all being game controllers for computer games and handheld units for playing computer games; handheld computer game consoles
International Class 035: Online retail store services featuring video and computer game hardware and software products
International Class 038: Provision of access to internet platforms and portals for the purpose of online gaming; transmission of videos, movies, pictures, images, text, photos, computer games, user-generated content in the nature of ______ {clarify content, e.g. images, audio and video}, audio content, and information via the internet; providing online forums and instant messaging services for communication in relation to gaming and online gaming; providing access to computer databases in the fields of computer and video games
International Class 041: Video game entertainment services, namely, ______ {clarify service, e.g. providing online video games,
production of video game software}; rental of video games; providing online computer and video games; providing online interactive computer games; providing information relating to online
computer and video games; providing information online relating to computer games and computer enhancements for games; rental of electronic games equipment, machines and apparatus; electronic games,
non-downloadable, provided by means of the internet; providing entertainment services in the nature of providing online computer, video and
electronic games; electronic games services provided online from a computer network; providing online entertainment in the nature of video game tournaments;
providing online information to video game players about the ranking of their scores; providing online information on computer and video game strategies; electronic games services provided via computer networks and global communications networks; electronic games services provided by means of communications by
computer terminals or mobile telephone; electronic games services provided via computer networks and global communication networks; provision of an online magazine featuring
information in the field of computer games; providing online newsletters in the field of computer games via e-mail; video game arcade services; amusement
arcade gaming machine rental services; providing temporary use of non-downloadable game software
International Class 042: Development of computer and video game software and programs; design of computer and video game software and programs; computer programming of computer and video games; design and development of computer game software; design and development of computer hardware for computer and video games; computer and video game software authoring; computer and video game software installation; computer and video game software maintenance; computer and video game software engineering; rental of computer and video game software; rental of computer game programs
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.
TRADEMARK COUNSEL SUGGESTED
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than authorized Canadian 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. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
RESPONSE TO OFFICE ACTION GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).
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.
/Hai-Ly Lam/
Hai-Ly Lam
Trademark Examining Attorney
Law Office 112
Telephone: (571) 272-3354
Email: hai.lam@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.