UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 3/8/2018

 

 

INTERNATIONAL REGISTRATION NO. 1359396

 

This letter responds to applicant’s communication of February 16, 2018 in which applicant requested suspension of the application pending the outcome of Serial No.  86853066.  However, the prior pending application has since registered and the application is now refused as follows:

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5024950 and 5286996.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Applicant has applied to register EVERYWHERE for goods and services in International Classes 9, 16, 28, 35, 38, 41 and 42.

 

The registered marks are: (1) EVERYWEAR GAMES for goods and services in International Classes 9, 41 and 42 and (2) EVERYWHERE for services in International Class 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).

 

(1) EVERYWEAR GAMES:

 

In this case, 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).

 

Although the cited mark includes an additional wording, this term has been disclaimed as being generic or descriptive of 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).

 

(2) EVERYWHERE:

 

Here, applicant’s mark is EVERYWHERE and registrant’s mark is EVERYWHERE.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

B. Comparison of the Goods and/or Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, the parties offer identical and closely related goods and services in the same fields of computer games, video games, and gaming.  Further, the second registrant’s multidisciplinary graphic design services are identified broadly and would encompass the applicant’s computer and technological services in Class 42.

 

Moreover, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  As such, the goods and/or 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/or services emanate from a common source.

 

Accordingly, the presence of identical and 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES – MAINTAINED AND CONTINUED

 

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 or inserted 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

 

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.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/8/2018 FOR U.S. APPLICATION SERIAL NO. 79213948

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/8/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.