UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1443450
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.
SUMMARY OF ISSUES:
- Refusal – Likelihood of Confusion
- Identification of Goods and Services
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. 4029111. 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 is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods
and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du
Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only
those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78
USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant,
there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the
compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly
similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie
Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Applicant has applied for the mark BUILD A ROCKET BOY for 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 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; game software for use with video game consoles;
computer game entertainment software; interactive multimedia computer game programs; computer game software for use with online games; 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 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 data files relating to games and gaming; computer application software featuring games and gaming; downloadable software in the nature of mobile applications for playing games;
mobile computer application software for mobile phones, portable media players and handheld computers, namely, software for use in relation to playing mobile computer and video games; application
software for social networking services via the internet; downloadable interactive entertainment software for playing computer and video games; downloadable electronic publications, namely, books,
booklets, manuals, magazines, written articles, newsletters and instructional guides relating to games and gaming; computer software for the administration of online games and gaming; computer
firmware for playing games and gaming; firmware for computer peripherals, namely, firmware relating to computer peripherals used for playing games and gaming; computers and computer hardware for
games and gaming; game programs for arcade video game machines; computer software to enable virtual reality viewing of environments; computer graphics software; graphical user interface software;
interactive video software for use in relation to playing games and gaming; interactive multimedia computer programs for use in relation to playing games and gaming; virtual reality software for use
in relation to playing games and gaming; virtual reality headsets; virtual reality game software; augmented reality software for use in relation to playing games and gaming; augmented reality
software for creating maps; augmented reality software for use in mobile devices for use in relation to playing games and gaming; augmented reality software for use in mobile devices for integrating
electronic data with real world environments for the purpose of playing games and gaming on mobile devices; computer programs for providing an all-around view of virtual environments; computer
software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Video game entertainment services, namely, providing online
non-downloadable video games; 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; providing non-downloadable internet games; educational and training services relating to
games, namely, providing classes, seminars and workshops in the field of video games, gaming and video game development and training in the field of playing and developing video games and gaming;
providing entertainment services in the nature of online non-downloadable computer, video and electronic games; games services provided online from a computer network; providing online entertainment
in the nature of game tournaments; providing online information to game players about the ranking of their scores; providing online information on computer and video game strategies; online games
services provided via computer networks and global communications networks; online games services provided by means of communications by computer terminals or mobile telephone; online 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; computer and video game software publishing services; and 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;
design and development of virtual reality software; design and development of virtual reality computer hardware; design and development of interactive multimedia software; renting of computer
hardware and computer software; software as a service services featuring software for enabling virtual reality viewing of environments; provision of information and consultancy services in relation
to all of the aforesaid; rental of computer game programs; rental of computer and video game software.
The registered mark is ROCKET BOY for Digital media, namely, pre-recorded
downloadable audio and video recordings, directed toward children and young adults featuring an animated cartoon superhero.
Marks may be confusingly similar in appearance where similar
terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v.
Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d
1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and
CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP
§1207.01(b)(ii)-(iii).
Also, adding a term to a registered mark generally
does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9
USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in
part.
Here, applicant has merely added the wording “BUILD A” to the registered mark; otherwise, the respective marks share the phrase “ROCKET BOY” in
common.
Therefore, the marks are confusingly
similar.
Similarity of Goods and
Services
The compared
goods and 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).
The
attached Internet evidence, consisting of third-party web pages, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the
same mark. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.
See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69,
1271-72 (TTAB 2009).
From the attached references, it is apparent that consumers routinely encounter video games
featuring the same animated cartoon characters featured in television shows or movies. See attached.
Thus, the respective goods and services are considered
related.
Because the marks are so highly similar and the goods and services are so closely related, there is a likelihood that purchasers would confuse the sources of
the goods and services or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a
likelihood of confusion.
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 Recitation of Services
The identification of goods and services for Classes 9 and 41 (Class 42 is acceptable
as written) is indefinite and must be clarified because applicant must better clarify/define the function/subject matter/use of its various software, as well as confirming the online/temporary use of
the software services offered in Class 41. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification
to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the goods and
services have no common commercial or generic name, applicant must describe or explain the nature of the goods and services using clear and succinct language.
See id.
Finally, applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below
offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the
identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL
CAPS.
Applicant may adopt the following wording, if accurate:
- game software; computer GAME and video games software; electronic game software; computer GAME and video game
programs; computer and video game discs; video games on disc; computer and video game cartridges; computer and video game cassettes, disks and DVDs; downloadable electronic game programs;
downloadable computer GAME and video game programs and software; interactive computer GAME and video game programs; interactive multimedia software for playing games; recorded computer
game software; game software for use with video game consoles; computer game entertainment software; interactive multimedia computer game programs; computer game software for use with online games;
electronic game software for mobile phones, handheld electronic devices and wireless devices; computer programs FEATURING pre-recorded games; pre-recorded compact discs featuring games;
computer hardware for games and gaming; video games in the form of computer programs recorded on data carriers; computer GAME and video game software and programs downloadable from the
internet; computer game software downloadable from a global computer network and wireless devices; downloadable ELECTRONIC data files relating to games and gaming; computer application
software featuring games and gaming; downloadable software in the nature of mobile applications for playing games; mobile computer application software for mobile phones, portable media players and
handheld computers, namely, software for use in relation to playing mobile computer and video games; application software for ACCESSING social networking services via the internet;
downloadable interactive entertainment software for playing computer and video games; downloadable electronic publications, namely, books, booklets, manuals, magazines, written articles, newsletters
and instructional guides relating to VIDEO AND COMPUTER games and gaming; computer software for the administration of online games and gaming; computer firmware for playing VIDEO AND
COMPUTER games and gaming; firmware for computer peripherals, namely, firmware
relating to FOR MANAGING THE OPERATION OF computer peripherals used for playing
games and gaming; computers and computer hardware for games and gaming; game programs for arcade video game machines; computer software to enable virtual reality viewing of environments; computer
graphics software; graphical user interface software; interactive video software for use in relation to playing ONLINE VIDEO games and
gaming; interactive multimedia computer programs for use in relation to playing ONLINE VIDEO games and gaming; virtual reality
software for use in relation to playing ONLINE VIDEO games and gaming; virtual reality headsets; virtual reality game software;
augmented reality software for use in relation to playing ONLINE VIDEO games and gaming; augmented reality software for creating maps;
augmented reality software for use in mobile devices for use in relation to playing ONLINE VIDEO games and gaming; augmented reality
software for use in mobile devices for integrating electronic data with real world environments for the purpose of playing games and gaming on mobile devices; computer programs for providing an
all-around view of virtual environments; computer software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks, in Class
9
- Video game entertainment services, namely, providing online non-downloadable video games; rental of video games; providing NON-DOWNLOADABLE
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; providing TEMPORARY USE OF non-downloadable internet games; educational and training services relating to games, namely, providing classes, seminars
and workshops in the field of video games, gaming and video game development and training in the field of playing and developing video games and gaming; providing entertainment services in the nature
of THE TEMPORARY USE OF online non-downloadable computer, video and electronic games; ONLINE games services provided online from a computer network; providing online entertainment in
the nature of ONLINE VIDEO game tournaments; providing online information to ONLINE VIDEO game players about the ranking of their scores; providing online information on computer and
video game strategies;
online games services provided via computer networks and global communications networks (wording is duplicative of
previously-suggested wording); online games services provided by means of communications by computer terminals or mobile telephone; ENTERTAINMENT SERVICES, NAMELY,
PROVIDING online 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; computer and video game software publishing services, in Class 41
- 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; design and development of virtual reality software; design
and development of virtual reality computer hardware; design and development of interactive multimedia software; renting of computer hardware and computer software; software as a service services
featuring software for enabling virtual reality viewing of environments; provision of information and consultancy services in relation to all of the aforesaid; rental of computer game programs;
rental of computer and video game software, in Class 42
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.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or
services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally,
any deleted goods and/or services may not later be reinserted. See 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).
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.
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@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.