UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85908660
MARK: VANQUISH
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CORRESPONDENT ADDRESS: 448 KATO TERRACE FREMONT CA 94539 |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: HANAPS ENTERPRISES
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
ISSUE/MAILING DATE: 8/16/2013
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 that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is VANQUISH, in standard characters for “computer hardware” in International Class 9 and “selling of online retail computer hardware” in International Class 35.
Registrant’s mark is VANQUISH, in a stylized form with a design element, for “video game software; computer game programs” in International Class 9.
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
In this case, applicant’s mark, VANQUISH, and registrant’s mark, VANQUISH, create the same commercial impression; the marks are identical but for registrant’s design features.
Therefore, the marks create the same commercial impression because they are identical in sound and could be displayed in a similar or identical manner.
Relatedness of the Goods
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Again, applicant’s goods are “computer hardware” in International Class 9 and “selling of online retail computer hardware” in International Class 35 and registrant’s goods are “video game software; computer game programs” in International Class 9.
About.com defines computer hardware as “the physical components that make up a computer system.” These physical components include items such as video cards and joysticks. Merriam-Webster’s dictionary defines software as “something used or associated with, and usually contrasted with hardware as the entire set of programs, procedures and related documentation associated with a (computer) system.”
The attached Internet evidence consists of internet screenshots from Target.com, GameStop, Wii and Engadget. This evidence establishes that the same entity commonly manufactures and provides the relevant goods and/or services and markets the goods and/or services under the same mark, that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods and/or services are similar or complementary in terms of purpose or function. Therefore, 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).
Specifically, each screenshot shows computer hardware sold with video game software/programs under a single mark. X-Box hardware and video game software is bundled in the Target screenshot; Playstation hardware and video game software is bundled in the GameStop screen shot; and Wii hardware and video game software is bundled in the Wii screen shot. Therefore, the goods of both applicant and registrant travel through the same channels of trade, and are produced by the same company under the same mark.
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
International Class 9
International Class 35
Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).
Thus, upon encountering VANQUISH for, computer hardware, selling of online retail computer hardware,” and VANQUISH for “video game software; computer game programs” consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source. Therefore, registration must be refused under Section 2(d) of the Trademark Act.
Applicant must respond to the requirement(s) set forth below.
IDENTIFICATION OF SERVICES
Applicant’s recitation of services includes “selling of online retail computer hardware” in International Class 35.
Therefore, applicant must delete “selling” and indicate with greater specificity the nature of the service, e.g., “on-line retail store services featuring computer hardware.”
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
/chrisreams/
Trademark Examining Attorney
Law Office 102
571 2727815
christopher.reams@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.