Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  November 05, 2019

 

This is in response to applicant’s letter of October 25, 2019.

 

Prior History

 

In an email exchange with the applicant Tuesday, October 24, 2019 the examining attorney erroneously assured the applicant that there was no conflicting applications confusing with the applied for mark. This was due to a typographical error on the examining attorney’s part, and the examining attorney apologizes for this unacceptable mistake, and the confusion it cause. The examining attorney phoned applicant on October 28, 2019, leaving a message to the effect that a new refusal would need to be issued to correct the mistake.

 

As outlined below, the refusal to register based on a likelihood of confusion must be made. The examining attorney reissues the arguments and evidence below as well as a new refusal based on applicant’s specimen of use.   

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3566894.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); 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). 

 

In the present case, applicant’s mark is THE OASIS and registrant’s mark is THE OASIS.  These marks are identical in 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.

 

The additional design element in the registered mark does not obviate this refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Therefore, the marks are confusingly similar. 

 

Comparison of Goods and Services

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The registered services are “Providing amusement parks featuring water rides, water slides, body surfing pools, and swimming pools” in class 41, and “Providing hot tub facilities” in class 44.

The applied for goods and services are “Augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of Gaming; Games that accept virtual or monetary wagers sold as a feature of game software; Gaming software that generates or displays wager outcomes of gaming machines; Software for optical character recognition; Virtual reality game software; Virtual reality glasses; Virtual reality headsets; Virtual reality software for medical teaching; Virtual reality software for Playing games and training; Virtual reality training simulation software in the field of multiple fields; Augmented reality software for gaming and training; Children's educational software; Computer game software downloadable from a global computer network; Computer game software focusing on achieving a set of goals, positions, ownership, and credentials, and professional and social status, and good fortune necessary to succeed professionally and personally, and not referring either to a group of software for use in commerce or to a group of offices; Computer game software for gaming machines, namely, slot machines and video lottery terminals; Computer game software for personal computers and home video game consoles; Computer game software for use on mobile and cellular phones; Computer game software for use with personal computers, home video game consoles used with televisions and arcade-based video game consoles; Computer gaming software for gambling; Computer gaming software for recreational game playing purposes; Computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; Computer software for database management; Computer software, namely, game engine software for video game development and operation; Computer game software; Computer software for the databasing, visualization, manipulation, virtual reality immersion and integration of geographic information with on-line member communities; Downloadable computer game software via a global computer network and wireless devices; Downloadable electronic game software for use on Computer; Electronic game software for cellular telephones; Electronic game software for handheld electronic devices; Electronic game software for wireless devices; Electronic game software; Electronic sports training simulators; Game software; Headsets for virtual reality games; Hygienic covers adapted for virtual reality head-mounted displays; Hygienic covers adapted for virtual reality headsets; Hygienic pads adapted for virtual reality head-mounted displays; Hygienic pads adapted for virtual reality headsets; Interactive game software; Medical software for Training; Network access server operating software; Video game software; Web site development software; Wireless communication device featuring voice, data and image transmission including voice, text and picture messaging, a video and still image camera, also functional to purchase music, games, video and software applications over the air for downloading to the device” in class 09, and “Amusement centers; Amusement park and theme park services; Amusement park services; Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Amusement arcade services; Amusement arcades; Children's entertainment and amusement centers, namely, interactive play areas; Entertainment in the nature of a water park and amusement center; Entertainment in the nature of an amusement park ride; Entertainment services in the nature of an amusement park attraction, namely, a themed area; Entertainment services in the nature of an amusement park show; Entertainment services, namely, a video arcade housed in a Mobile Trailer; Entertainment services, namely, arranging and conducting special events at an amusement park; Entertainment services, namely, arranging for ticket reservations for amusement park attractions; Entertainment services, namely, arranging for ticket reservations for water parks and amusement centers; Entertainment services, namely, providing an amusement park ride in the nature of Virtual Reality Simulation; Providing amusement facilities; Providing amusement parks; Providing amusement arcade services; Providing facilities for recreational activities, namely, Virtual Reality; Providing information about birdwatching; Providing recreation facilities; Provision of information relating to amusement park shows; Rental of amusement machines and apparatus; Video arcade services” in class 41.

 

These services are all highly related and would appeal to the same types of consumers and appear in the same channels of trade. They are amusement park services, and further applicant’s software and class 09 gaming and other VR/AR goods are often featured at amusement parks.

 

Attached are third party web pages and news articles showing the overlap of these types of goods, and amusement parks. This demonstrates consumers would be likely to believe they all emanate from the same source. See Attached.

 

Applicant should note the additional ground for refusal.

 

SPECIMEN DOES NOT SHOW USE WITH CLASS 41

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 41 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the mark THE OASIS is not shown with the amusement park services being advertised.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney.

 

/FrankLattuca/

Frank Lattuca

Examiing Attorney

Law Office 109

(571) 270-1518

Frank.Lattuca@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 05, 2019 for

U.S. Trademark Application Serial No. 87856103

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/FrankLattuca/

Frank Lattuca

Examiing Attorney

Law Office 109

(571) 270-1518

Frank.Lattuca@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 05, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”