To: | Nodecraft Inc. (admin@nodecraft.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88021579 - NODECRAFT - N/A |
Sent: | 10/19/2018 2:43:31 PM |
Sent As: | ECOM120@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88021579
MARK: NODECRAFT
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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: Nodecraft 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: 10/19/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Registration Refused – Section 2(d) Likelihood of Confusion
This refusal applies to the following services only: “Video game development services; Video game programming development services” in International Class 42.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4760580. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration (“Exhibit A”).
The applied-for mark is “NODECRAFT” with design for “Video game development services; Video game programming development services” in International Class 42.
The registered mark is “NODE STUDIOS” in standard characters for, inter alia, “Providing a web site for entertainment purposes featuring non-downloadable videos, movies, films, pictures, images, text, photos, audio content and information in the field of video gaming; Entertainment and educational services, namely, providing a web site where users can view a multi-media programs series featuring electronic media, multimedia content, videos, movies, films, pictures, images, text, photos, audio content, and related information via global computer networks on video gaming; entertainment services, namely, providing on-going programs for streaming in the field of video gaming; providing an on-line web site with on-line channels for entertainment purposes featuring video gaming content; entertainment services, namely, providing movie trailers, games, films, original series and other multimedia content about video gaming via a global computer network; on-line digital video, audio and multimedia video gaming content publishing services” in International Class 41.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
Comparison of Marks
In this instance, the applied-for mark “NODECRAFT” and the registered mark “NODE STUDIOS” begin with the same term “NODE”. Marks may be confusingly similar in sound and appearance where the same or similar terms appear in the compared marks and create a similar overall commercial impression. See In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the marks are identical in part as the term “NODE” is identical in sound, spelling, and commercial impression as used in the marks.
The inclusion of “CRAFT” in the applied-for mark and “STUDIOS” in the registered mark does not obviate the likelihood of confusion. Consumers are generally more inclined to focus on the first word in any service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”). The first term in each mark is the shared term “NODE”.
In addition, the registrant has disclaimed “STUDIOS” as descriptive of its services and business. Disclaimed matter that is descriptive of a party’s business or services is typically less significant or less dominant when comparing marks. See 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). Thus, consumers are likely to consider the term “STUDIOS” as merely indicating the registrant is engaged in production services and, instead, consider the shared term “NODE” to be the source-indicating matter in the registered mark.
Furthermore, the design element in the applied-for mark does not diminish the likelihood of confusion. When evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the services because it is that portion of the mark that consumers use when referring to or requesting the services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016); 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. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911.
Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.
Comparison of Services
In this instance, the services of the applicant and registrant are related because the services commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from Wikipedia® and websites of gaming companies (“Exhibit B”). This evidence demonstrates that video game publishers commonly also develop video games under the same mark and promote these services through the same trade channels. For example, Activision® indicates on its website that it is a worldwide developer, publisher, and distributor of interactive entertainment and games as well as provides a website featuring information about its gaming content.
Therefore, the applicant’s video game programming services and the registrant’s game information and game publishing 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).
Conclusion
Because the applicant’s applied-for mark and the registered mark are similar and the services are related, registration is refused for a likelihood of confusion under Section 2(d).
Advisory: Applicant’s Response Options
(1) Deleting the services to which the refusal pertains; or
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
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 42 will be deleted from the application: “Video game development services; Video game programming development services”.
The application will then proceed with the following goods and/or services in International Class 42 only: “Computer services, namely, integration of private and public cloud computing environments; Web site hosting services”. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Response Guidelines
For this application to proceed further, applicant must explicitly address the refusal 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 specified in this Office action for responding to a refusal and should consider those 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.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
If the applicant has any questions or requires assistance in responding to this Office action, please telephone the assigned examining attorney.
/Thomas Young/
Examining Attorney
Law Office 120
thomas.young@uspto.gov
(571) 272-5152
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.
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.