To: | Jam City, Inc. (trademarks@cooley.com) |
Subject: | U.S. Trademark Application Serial No. 88020545 - OVERTIME - 334378-20000 |
Sent: | February 01, 2021 08:59:27 AM |
Sent As: | ecom123@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88020545
Mark: OVERTIME
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Correspondence Address: 1299 PENNSYLVANIA AVENUE, NW, SUITE 700
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Applicant: Jam City, Inc.
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Reference/Docket No. 334378-20000
Correspondence Email Address: |
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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.
INTRODUCTION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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. 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.
Applicant's mark is "OVERTIME" for "computer game software; downloadable computer game software; computer game software for use on mobile and cellular phones" in International Class 9.
Already registered is the mark "OVERTIME" for "downloadable software application for use in distribution of multimedia programs and entertainment content featuring sports, popular culture, current events, reality, drama and comedy, distributed via various media platforms, including via the internet, mobile networks, wireless devices and television, where viewers can contribute, post, customize and share stories, articles, video, images and commentary; and form virtual communities, and engage in social networking in the field of sports" in International Class 9.
Similarity of the Marks
The respective marks, "OVERTIME" and "OVERTIME", are confusingly similar, as set forth below.
In the present case, applicant’s mark is "OVERTIME" and registrant’s mark is "OVERTIME". 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. Id.
Therefore, the marks are confusingly similar and create the same overall commercial impression.
Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
Similarity of the Goods
Applicant seeks registration of its mark for "computer game software; downloadable computer game software; computer game software for use on mobile and cellular phones".
The goods identified in the cited registration are "downloadable software application for use in distribution of multimedia programs and entertainment content featuring sports, popular culture, current events, reality, drama and comedy, distributed via various media platforms, including via the internet, mobile networks, wireless devices and television, where viewers can contribute, post, customize and share stories, articles, video, images and commentary; and form virtual communities, and engage in social networking in the field of sports".
Applicant’s goods are closely related to registrant’s goods as set forth below.
The evidence of record demonstrates that applicant's game software and registrant's application sports software are commonly offered together by application software companies under the same mark and through the same trade channels to the same type of consumers. Specifically, the attached Internet evidence consists of excerpted website printouts from application software companies. See attached excerpts from http://play.google.com/, http://apps.apple.com/. For example, in the attached website from Baseball 9, the application software company offers game software as well as sports software applications. See attached website excerpts from http://play.google.com/. Similarly, FIFA provides game software and sports software applications. See attached website excerpts from http://play.google.com/. The attached Internet evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods 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).
Therefore, upon encountering "OVERTIME" used for "computer game software; downloadable computer game software; computer game software for use on mobile and cellular phones", and "OVERTIME" used for "downloadable software application for use in distribution of multimedia programs and entertainment content featuring sports, popular culture, current events, reality, drama and comedy, distributed via various media platforms, including via the internet, mobile networks, wireless devices and television, where viewers can contribute, post, customize and share stories, articles, video, images and commentary; and form virtual communities, and engage in social networking in the field of sports", consumers are likely to be confused as to the source of the goods.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
If applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
Matthew Howell
/Matthew Howell/
Examining Attorney
Trademark Law Office 123
(571)270-0992
matthew.howell@uspto.gov
RESPONSE GUIDANCE