UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87898302
MARK: MAD
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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: E.C. Publications, Inc.
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/11/2019
This Office action is in response to applicant’s communication filed on February 22, 2019.
Applicant has satisfied the requirement for clarification of the identification of services. See TMEP §§713.02, 714.04.
The prior-filed application noted in the Office action dated August 23, 2018 has registered. Accordingly, the trademark examining attorney now issues the following new refusal: Trademark Act Section 2(d) likelihood of confusion refusal. See TMEP §§706, 711.02.
The following is a SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL, IN PART – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.
Applicant’s mark is MAD (in special form) for Entertainment services, namely, providing online video games, providing online computer games, providing temporary use of non-downloadable video games; video and computer game services provided on-line from a computer network; entertainment services in the nature of live-action, comedy, drama, animated, and reality television series; production of live-action, comedy, drama, animated and reality television series; distribution and display of live-action, comedy, drama and animated motion picture theatrical films; production of live-action, comedy, drama and animated motion picture theatrical films; providing information via an electronic global computer network in the field of entertainment relating specifically to games, music, movies, and television; providing film clips, photographs and other multimedia materials for entertainment purposes via a web site; and providing information for and actual entertainment via an electronic global communications network in the nature of live-action, comedy, drama and animated programs and production of live-action, comedy, drama and animated motion picture films for distribution via a global computer network; providing a computer game that may be accessed by a telecommunications network; electronic games services provided via a global computer network in International Class 41.
Registrant’s mark is MAD STUDIO (in standard character form) for, in relevant part, film studios in International Class 41.
Standard for Likelihood of Confusion
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.
Similarity of the Marks
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, the marks create substantially similar commercial impressions because they are comprised of the identical dominant word MAD.
Specifically, the marks are similar in appearance in that they include the identical word MAD. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The likelihood of confusion is not obviated even though the registered mark includes the additional wording “STUDIO”, which has been disclaimed. Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). As such, “MAD” is rendered the dominant portion that engenders the overall commercial impression of the mark.
Lastly, the likelihood of confusion is not obviated even though the applied-for mark is in special form featuring stylized wording. Here, the registered mark is in standard characters and has the potential to be stylized in a manner similar to the applied-for mark. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Overall, the marks are identical as to “MAD”, the sole component of the applied-for mark and the primary component of the registered mark. Thus, the marks are confusingly similar.
Relatedness of the Services
Applicant’s services |
Evidence |
Entertainment services, namely, providing online video games, providing online computer games, providing temporary use of non-downloadable video games; video and computer game services provided on-line from a computer network; providing a computer game that may be accessed by a telecommunications network; electronic games services provided via a global computer network
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See Attachment B. |
entertainment services in the nature of live-action, comedy, drama, animated, and reality television series; production of live-action, comedy, drama, animated and reality television series |
See Attachment C. |
distribution and display of live-action, comedy, drama and animated motion picture theatrical films; production of live-action, comedy, drama and animated motion picture theatrical films |
See Attachment D. |
providing information via an electronic global computer network in the field of entertainment relating specifically to games, music, movies, and television |
See Attachments B, C, and D. |
providing film clips, photographs and other multimedia materials for entertainment purposes via a web site |
See Attachment E. |
providing information for and actual entertainment via an electronic global communications network in the nature of live-action, comedy, drama and animated programs and production of live-action, comedy, drama and animated motion picture films for distribution via a global computer network |
http://en.wikipedia.org/wiki/List_of_original_films_distributed_by_Netflix#Original_films & http://www.netflix.com/
http://disneynow.go.com/all-shows
See Attachment F. |
See also Attachment G showing that Netflix, Warner Bros., Disney, Universal, and 20th Century Fox provide registrant’s film studio services. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In sum, upon encountering the similar marks of the applicant and registrant on the closely related services concerned in this case, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source or are connected in some way. Based on this likelihood of source confusion, registration is 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.
ADVISORY: PARTIAL ABANDONMENT
If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 41 will be deleted from the application:
Entertainment services, namely, providing online video games, providing online computer games, providing temporary use of non-downloadable video games; video and computer game services provided on-line from a computer network; entertainment services in the nature of live-action, comedy, drama, animated, and reality television series; production of live-action, comedy, drama, animated and reality television series; distribution and display of live-action, comedy, drama and animated motion picture theatrical films; production of live-action, comedy, drama and animated motion picture theatrical films; providing information via an electronic global computer network in the field of entertainment relating specifically to games, music, movies, and television; providing film clips, photographs and other multimedia materials for entertainment purposes via a web site; and providing information for and actual entertainment via an electronic global communications network in the nature of live-action, comedy, drama and animated programs and production of live-action, comedy, drama and animated motion picture films for distribution via a global computer network; providing a computer game that may be accessed by a telecommunications network; electronic games services provided via a global computer network.
The application will then proceed with the following services in International Class 41 only:
electronic publishing services, namely, publication of text and magazines on-line featuring articles, novelizations, scripts, comic books, photographs and visual materials; publication of text and graphic works of others on-line featuring articles, novelizations, scripts, comic books, strategy guides, photographs and visual materials; non-downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides, magazines featuring characters from animated, action adventure, comedy and/or drama features, coloring books, children's activity books and magazines in the field of entertainment
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONDING TO THIS OFFICE ACTION
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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS
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 $125 per 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 or e-mail without incurring this additional fee.
/Luz Adorno/
Trademark Examining Attorney, Law Office 111
United States Patent and Trademark Office
(571) 272-4902
Luz.Adorno@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.