To: | GRIGORIUS HOLDINGS, SIA (jgm@moas.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87808072 - PARASITE EVE - 14582/2018 |
Sent: | 12/4/2018 1:36:42 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87808072
MARK: PARASITE EVE
|
|
CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
|
APPLICANT: GRIGORIUS HOLDINGS, SIA
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 12/4/2018
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 87299924
FOREIGN REGISTRATION: Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a). Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal. TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a). If the foreign registration or renewal document is not in English, applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b). Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained:
- Section 2(d) Refusal – Likelihood of Confusion
- Indefinite Identification of Goods – Indefinite & Scope
POTENTIAL NEW REFUSAL: The trademark examining attorney notes that the mark that was the subject of U.S. Ser. No. 87299932 has now matured to registration (U.S. Reg. No. 5527431). Upon the final disposition of U.S. Ser. No. 87299924, the trademark examining attorney notes that the application may be additionally refused under Section 2(d) of the Trademark Act for a likelihood of confusion with a registered mark(s).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The trademark examining attorney maintains the refusal to register the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 2583240. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please reference the registration made of record in the Office Action dated May 1, 2018.
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.
Marks are Identical
In the present case, applicant’s mark is "PARASITE EVE" and registrant’s mark is "PARASITE EVE". These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the trademark examining attorney maintains that the marks are confusingly similar.
In its response to the Office Action, applicant has not submitted any arguments refuting the identical nature of the respective marks. Please reference applicant's response to the Office Action dated October 30, 2018.
Goods are Related
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). The compared goods and/or 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).
In its response to the Office Action, applicant submits that it has amended the identification of goods to obviate the likelihood of confusion based on the registered mark. Please reference applicant's response to the Office Action dated October 30, 2018. The trademark examining attorney has considered applicant's arguments and found the foregoing unpersuasive.
The trademark examining attorney maintains that the respective goods, as amended and at least in part, are still related to the goods identified in the cited registration. As amended, applicant provides computer game software, video recordings featuring a number of genres, various game goods, related printed materials and the like that still are related to the computer game programs and video computer game programs identified by the registrant. Therefore, the trademark examining attorney maintains that applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.
The trademark examining attorney reserves the right to more fully address applicant's arguments if a final Office Action issues in this ex parte examination.
Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and the trademark examining attorney maintains the refusal to register the applied-for under Section 2(d) of the Trademark Act.
IDENTIFICATION OF GOODS – Scope (limited to International Class 9)
- Generally (applicable to Class 9 and 28)
In this case, applicant has appeared to place a colon in a manner that has improperly split up a particular goods description (see suggested amendment below in International Class 9). Further, applicant has placed a "?" mark in a particular spot in the identification of goods (see suggested amendment below in International Class 28).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
- Class 16
The trademark examining attorney maintains that the wording "music sheets" in the identification of goods for International Class 16 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass electronic type music sheets and the like in International Class 9 or printed music sheets in International Class 16.
- Class 28
In this case, the U.S. application originally identified the goods and/or services as follows: "gymnastic articles not included in other classes," in International Class 28.
The proposed amendment to the U.S. application identifies the following goods and/or services (where the underlined portion is the unacceptable portion): "gymnastic and sporting articles not included in other classes, namely, . . . athletic supporters, protective supports for shoulders and elbows, sleds, weight lifting belts, athletic tape, waist trimmer exercise belts," in International Class 28.
This portion of the proposed amendment is beyond the scope of the original identification because sporting articles is broader than the originally identified more narrow gymnastic articles, and it is not clear if any of the above-referenced goods listed thereafter are used as gymnastic articles.
Applicant may substitute the following wording, if accurate:
"Computer hardware; Computer software, namely, downloadable computer software for word processing, computer software for document and database
management, for application and database integration, for producing financial models, for use as a spreadsheet, for authorizing access to databases, for creating searchable databases of information
and data, for use in customer relationship management (CRM), to automate data warehousing, and for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of
data and information, software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user
interface; Communications software for connecting computer network users, global computer networks, computer software for controlling self-service terminals, for administration of computer networks,
for wireless content delivery, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and
managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the
Internet; Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds,
for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia
applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software, namely, computer software for encryption, computer software development tools,
computer operating software, computer graphics software, computer game software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for
operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer peripherals; electronic data processing
apparatus; computer networking and data communications equipment, namely, computer networking hardware, electronic communications systems comprised of computer hardware for the transmission of data
between two points, computer network adapters, switches, routers, and hubs; Computer components and parts, namely, electronic components for computers; electronic computer memory devices; electronic
control apparatus in the nature of electrical controlling devices and computer keyboard controllers; programmed-data-carrying electronic circuits;
video films, namely, video recordings featuring art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and
technology, law electronic circuits; electric wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards," in International
9;
"Paper; cardboard; printed publications and printed matter, namely, printed certificates, booklets, coupons, lectures, leaflets, paper signs, manuals, curricula, newsletters, informational cards and brochures in the fields of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; Inking Ribbons for computer printers; bookbinding materials; books in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; adhesives for stationery or household purposes; artists' paint brushes; printed music sheets; printed music scores on sheets; periodical magazines in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; photographs; stationery and educational supplies, namely, blank note books and school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue for stationery or household use and book marks; typewriters; printed instructional and teaching material, except apparatus, namely in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; plastic materials, namely, bags, bubble packs and films for packaging; printing blocks," in International Class 16;
"Games and playthings, namely, board games, dice games, tabletop games, action target games, party games, puzzles, playing cards and card games,
mechanical toys, parlor games, stuffed toys, toy construction kits, toy vehicles; ?{delete}gymnastic and sporting articles not included in other classes, namely, springboards, appliances for gymnastics, athletic supporters for use by gymnasts, protective supports for shoulders and elbows for use by gymnasts, sleds used for training purposes by gymnasts, weight lifting belts used for training purposes by gymnasts,
athletic tape used by gymnasts , waist trimmer exercise belts used for training purposes by
gymnasts," in International Class 28.
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.
RESPONSE GUIDELINES
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Erin Z. Dyer/
Erin Zaskoda Dyer
Examining Attorney
Law Office 103
(571) 272-9740
erin.zaskoda@uspto.gov (preferred)
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.