To: | Valve Corporation (setrademarks@klgates.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86663636 - STEAM - N/A |
Sent: | 10/1/2015 8:23:00 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86663636
MARK: STEAM
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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: Valve Corporation
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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: 10/1/2015
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the 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
Applicant’s applied-for mark is “STEAM.” The registered marks are “CONTROSTEAM,” “STEAMGIRL,” and “STEAMARENA.” As explained below, these marks are similar.
The registered marks contain the applied-for mark, “STEAM,” in its entirety with identical spelling and pronunciation. The additional terms in the registered marks do not change the overall commercial impressions of the marks in order to obviate the refusal. 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 marks, and there is no other wording to distinguish it from the registered marks.
So, the marks are similar for likelihood of confusion purposes.
Similarity or Relatedness of the Services
Applicant’s services are “Network services, namely, electronic delivery, transmission, streaming, downloading and caching of audio, visual and multimedia content via global and local computer networks; entertainment services, namely, providing a website for livestreaming audio, visual and multimedia content; audio, video and multimedia broadcasting via global and local computer networks; webcasting services via global and local computer networks; providing online forums and chatrooms for users to post, search, watch, share, review, rate, critique, recommend and comment on events, activities, and on audio, visual, and multimedia content, via global and local computer networks.” The relevant services in Registration No. 3746934 are “Telecommunications, namely, providing telecommunications connections to a global computer network; ISDN services and personal communication services; information on telecommunications; communications via computer terminals or via fibre-optic networks; radio or telephone communication; mobile radiotelephony services; providing access to a global computer network; electronic display services, namely, video broadcasting services over the Internet or other communications network, namely, showing, displaying, and electronically transmitting video clips; connection by telecommunications to a global computer network; news and/or information agencies, namely, the transmission of news items to news reporting organizations; rental of telecommunication apparatus; radio and television broadcasting; teleconferencing services; electronic mail services; rental of access time to global computer networks.” The services in Registration No. 4376047 are “providing a website for entertainment purposes featuring photos about erotica.” The services in Registration No. 4308921 are “computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking services in the field of debating.” As explained below, these services are related.
The respective 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 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).
Absent restrictions in an application and/or registration, the identified 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 services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identifications set forth in the application and registrations have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.
Further, the Registration No. 3746934 uses broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in applicant’s more narrow identification. Specifically, registrant’s identification of “ISDN services and personal communication services; communications via computer terminals or via fibre-optic networks; electronic display services, namely, video broadcasting services over the Internet or other communications network, namely, showing, displaying, and electronically transmitting video clips” encompasses all of applicant’s more narrow network, broadcasting, and webcasting services.
Similarly, the broad identification of “entertainment services, namely, providing a website for livestreaming audio, visual and multimedia content” in applicant’s identification encompasses the more narrow identification in Registration No. 4376047, and the broad identification of “providing online forums and chatrooms for users to post, search, watch, share, review, rate, critique, recommend and comment on events, activities, and on audio, visual, and multimedia content, via global and local computer networks” in the application encompasses the more narrow identification in Registration No. 4308921.
So, applicant’s services are related to each of the registrants’ services for likelihood of confusion purposes.
Conclusion
Given that the applied-for mark is confusingly similar to the registrants’ marks in sound and appearance and that applicant’s services are related to registrants’ services, applicant is rightly refused registration under Section 2(d) for a likelihood of confusion.
It is important to note that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). This is because the overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
Applicant should note the following additional ground for refusal.
CLARIFICATION OF IDENTIFICATION OF SERVICES
Additionally, the wording “entertainment services, namely, providing a website for livestreaming audio, visual and multimedia content” in the identification of services is indefinite and must be clarified to indicate the specific subject matter of the content provided. See TMEP §1402.01.
Applicant may adopt the following identification of services, if accurate:
Class 38: “Network services, namely, electronic delivery, transmission, streaming, downloading and caching of audio, visual and multimedia content via global and local computer networks; audio, video and multimedia broadcasting via global and local computer networks; webcasting services via global and local computer networks; providing online forums and chatrooms for users to post, search, watch, share, review, rate, critique, recommend and comment on events, activities, and on audio, visual, and multimedia content, via global and local computer networks.”
Class 41: “Entertainment services, namely, providing a website for livestreaming audio, visual and multimedia content in the field of {indicate subject matter of content}.”
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). For information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by TEAS and in a paper submission, please go to http://www-cms.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.
RESPONSE GUIDELINES
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Clare Cahill/
Examining Attorney
Law Office 120
(571) 272-5218
clare.cahill@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.