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.

 

ISSUE/MAILING DATE: 11/5/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Likelihood of Confusion Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4266040.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed 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, 177 USPQ 563 (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)). 

 

Comparison 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).

 

Applicant’s mark is 888.   The mark in the cited registration is 888 WOW.  The marks are similar in sound, appearance and meaning, both sharing the term 888 which is the dominant first portion of the cited mark.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).  Applicant has merely adopted the registered mark and deleted the term WOW.  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.

 

Comparison of the Goods

 

The goods 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 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).

 

Applicant’s goods and services are:

 

“Computer game programs and computer game software, including software downloadable from the Internet; mobile applications for cell phones, tablets and other handheld devices in relation to gambling, amusement and entertainment services; interactive computer systems comprised of an interactive multimedia computer program for gaming and accessing gambling and gambling services, amusement and entertainment services, games, card games and casino games; magnetically encoded credit cards; magnetically encoded prepaid cards; magnetically encoded charge and discount cards; magnetically encoded loyalty scheme cards; magnetically encoded cards for use in connection with promotion schemes” in Class 9, and  

 

 

“Entertainment services, namely, providing online casino, gaming, and gambling services; providing computerized virtual slot machines and other instant win games; providing online casino games including roulette games, slot machines, blackjack, keno, baccarat, scratch cards and poker games; providing online poker network services; online gaming services, namely, providing virtual multi-player card rooms by means of the Internet; organization, production and presentation of tournaments, competitions, games and events; entertainment and interactive entertainment services, including the provision of all the aforesaid services by means of various technological platforms, including without limitation by the medium of television, interactive television, telephony, mobile or handheld devices or provided online from a computer database or via the Internet; organization of entertainment, amusement, competition, gaming, gambling, card games; assistance and advisory services and provision of information relating to all the aforesaid services” in Class 41. 

 

Registrant’s goods in Class 9 and services in Class 41 are:

 

“Computer gaming software and software for gaming machines; electronic gaming information apparatus, namely, prerecorded magnetic data carriers featuring electronic gaming information; gaming machines for use with television receivers; gaming machines and replacement parts and fittings therefor; casino games provided by electronic means, namely, downloadable electronic casino games via the Internet and wireless devices; gaming machines that generate or display wager outcomes; gaming machines in the nature of gambling machines; gaming machines in the nature of machines for playing games of chance; game machines in the nature of computerized video table games for gaming purposes; and gaming machines in the nature of electronic and electro-mechanical gaming tables with video output” in Class 9, and  

 

“Gaming, gambling and casino services, namely, gambling and online gambling services, casino and online casino services and wagering services; gaming and online gaming services, namely, providing games of chance and roulette-type games; rental of gaming machines; betting services; lottery services; leasing of casino games” in Class 41.    

 

Applicant’s goods in Class 9 are overlapping with registrant’s goods in Class 9, and are legally identical for purposes of determining likelihood of confusion.  In addition, applicant’s services in Class 41 are encompassed by registrant’s services in Class 41, and are legally identical for purposes of determining likelihood of confusion. 

 

Since the respective marks are confusingly similar, and applicant’s goods and the goods in the cited registration are closely related, purchasers of applicant’s goods may mistakenly assume that the goods come from registrant, or that registrant and applicant are somehow related.  Accordingly, there is a likelihood of confusion 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 by submitting evidence and arguments in support of registration.  If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

Significance of the Mark

Applicant must explain whether “888” has any meaning or significance in the industry in which the goods and services are manufactured and provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

Identification of Goods and Services

The identification of goods and services is indefinite and must be clarified. See TMEP §1402.01. The following specific issues must be resolved:

International Class 9:

The applicant must specify the actual function of the applications in the wording “mobile applications for cell phones, tablets and other handheld devices in relation to gambling, amusement and entertainment services.”

The applicant must clarify the use of the “prepaid cards,” “discount cards,” “loyalty scheme cards” and “promotion schemes” cards” in the wording “magnetically encoded prepaid cards; magnetically encoded charge and discount cards; magnetically encoded loyalty scheme cards; magnetically encoded cards for use in connection with promotion schemes.”

International Class 41:

The wording “providing computerized virtual slot machines and other instant win games” is indefinite because it could identify goods or services. The applicant must clarify the form of the services and the nature of the “instant win games.”

The wording “providing online poker network services” is indefinite. The applicant must clarify the form of the services.

The wording “organization, production and presentation of tournaments, competitions, games and events” is indefinite. The applicant must specify the field or subject matter for the tournaments, competitions and games and the applicant must identify the individual events by their common commercial or generic names.

The wording “entertainment and interactive entertainment services, including the provision of all the aforesaid services by means of various technological platforms, including without limitation by the medium of television, interactive television, telephony, mobile or handheld devices or provided online from a computer database or via the Internet” is too broad. The applicant must clarify the individual entertainment services by their common commercial or generic names. In addition, the applicant must specify the form of the services in order to ensure proper classification.

The wording “organization of entertainment, amusement, competition, gaming, gambling, card games” is too broad. The applicant must specify the type of “entertainment,” “amusement,” and “competition” events organized by the applicant.

The applicant may adopt the following format for the identification, if accurate:

“Computer game programs and computer game software, including software downloadable from the Internet; mobile applications for gambling, amusement and entertainment services, namely, software for use in playing games of chance on cell phones, tablets and other handheld devices; interactive computer systems comprised of an interactive multimedia computer program for gaming and accessing gambling and gambling services, amusement and entertainment services, games, card games and casino games; magnetically encoded credit cards; magnetically encoded prepaid gift and debit cards; magnetically encoded charge cards and cards for use in obtaining discounts for goods and services; magnetically encoded loyalty rewards cards for use by members of loyalty programs; magnetically encoded goods and services discount cards for use in promotional programs,” in International Class 9;

“Entertainment services, namely, providing online casino, gaming, and gambling services; providing online non-downloadable virtual slot machines and other instant win games of chance; providing online casino games including roulette games, slot machines, blackjack, keno, baccarat, scratch cards and poker games; providing online poker network services, namely, providing online poker tournaments; online gaming services, namely, providing virtual multi-player card rooms by means of the Internet; organization, production and presentation of gaming and gambling tournaments, competitions and games and events in the nature of ________ [specify form of events, e.g., ] in the fields of gaming and gambling; entertainment and interactive entertainment services, namely, providing _____________ [list individual events, e.g., ongoing television and radio programs in the field of gaming and providing online games of chance] distributed via various platforms across multiple forms of transmission media, including television, interactive television, telephony, mobile or handheld devices or provided online from a computer database or via the Internet; organization of entertainment and amusement events in the nature of gaming and gambling competitions and card games; assistance and advisory services and provision of information relating to all the aforesaid services,” in International Class 41.

Additions Not Allowed: An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

On-line Acceptable Identification of Goods and Services Manual: For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:

http://tess2.gov.uspto.report/netahtml/tidm.html

The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services. While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.

Questions

 

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. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the requirements 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.

 

/John M. Wilke/

Examining Attorney

Law Office 104

571-272-5871

john.wilke@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 11/5/2014 FOR U.S. APPLICATION SERIAL NO. 86344052

 

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 11/5/2014 (or sooner if specified in the Office action).  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 Trademark Electronic Application System (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.