To: | James Kim (james.kim@mradius.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87113912 - POKÉSTOP - N/A |
Sent: | 8/30/2016 6:10:36 PM |
Sent As: | ECOM106@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 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87113912
MARK: POKÉSTOP
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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: James Kim
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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: 8/30/2016
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:
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(a) REFUSAL – SUGGESTS FALSE CONNECTION
Applicant has applied to register the mark POKÉSTOP (in standard characters) for “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels” in International Class 35.
(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.
In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).
With respect to the first factor above, applicant’s mark, POKÉSTOP, is identical to the name POKÉSTOP, which has been used by another person, Niantic, Inc. Under Section 45, a “person” may be a natural person (i.e., an individual) or a juristic person (i.e., a corporation, partnership, association, union, or any other organization capable of suing or being sued). 15 U.S.C. §1127; TMEP §1203.03(a)(i); see Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 888, 160 USPQ 715, 720-21 (C.C.P.A. 1969); In re Pedersen, 109 USPQ2d 1185, 1191 (TTAB 2013).
The attached Internet evidence from http://support.pokemongo.nianticlabs.com shows that the name POKÉSTOP is used by Niantic to identify particular locations accessible in its video game, Pokémon Go. The attached Internet evidence from the following websites shows that Niantic is the developer that ruins and maintains the Pokémon Go game:
Therefore, the mark sought to be registered is identical to the name used by another person.
Regarding the second factor, the attached evidence from the following websites shows that the name POKÉSTOP uniquely and unmistakably points to Niantic:
These websites show that Niantic, the developer of the Pokémon Go game, is in charge of creating and managing POKÉSTOP locations in the game. Furthermore, Niantic has been met with a variety of controversies regarding its POKÉSTOP locations and has therefore achieved a high degree of notoriety such that the POKÉSTOP name is recognized as uniquely and unmistakably pointing to Niantic.
With respect to the third factor above, nothing in the record establishes that Niantic is connected with the applicant or applicant’s services. Accordingly, it is presumed for the sake of the present Section 2(a) refusal that there is indeed no connection between the person named in the mark and applicant or its services. Please see the inquiry below with regard to the relationship between applicant and the person named in the mark.
As to the fourth and final factor above, the attached evidence from the following websites indicates that Niantic has achieved significant fame and notoriety due to the success of the Pokémon Go video game:
These websites show that Niantic is the most popular game developer in the world, with top sales numbers in forty-five countries. Accordingly, the fame of Niantic is such that a connection with Niantic would be presumed when applicant uses the mark POKÉSTOP in connection with its services.
In sum, the applied-for mark is nearly identical to the name used by a famous person, namely, Niantic, and would be recognized as primarily referring to Niantic despite the lack of an established connection between Niantic and the applicant or its services. Moreover, Niantic and the POKÉSTOP name are sufficiently famous that a connection with applicant’s services would be falsely presumed when the applied-for mark is used in connection with the applicant’s services. Accordingly, registration is refused pursuant to Section 2(a) of the Trademark Act.
INQUIRY ABOUT RELATIONSHIP BETWEEN APPLICANT AND PERSON NAMED IN MARK
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
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.
/J. Evan Mucha/
Examining Attorney
Law Office 106
(571) 270-1989
evan.mucha@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.