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:  February 19, 2020

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on August 14, 2019.

 

In a previous Office action(s) dated January 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, and Trademark Act Section 2(e)(1) for a mark that is merely descriptive of the services.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and/or services and disclaimer requirement. 

 

The applicant was also notified of a prior pending application that could be a potential bar to registration.  As noted in the applicant’s response, the prior pending application (Serial No. 87507216) has been abandoned.  Therefore, consideration of this mark as a bar to registration is withdrawn.

 

Based on applicant’s response, the following refusal has been withdrawn: Section 2(e)(1) merely descriptive refusal.  See TMEP §§713.02, 714.04.  The disclaimer requirement has been satisfied.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now CONTINUED with respect to U.S. Registration No. 5372709.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  In addition, the following requirement(s) is now CONTINUED:  amend the identification.  See 37 C.F.R. §2.63(b).

 

This is a non-final action.

 

SUMMARY OF ISSUES

• Section 2(d) Refusal  
• Amend the Identification

 

SECTION 2(d) REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5372709.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Comparison of Marks

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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

In this instance, the dominant portion of both marks is the word OFFLINE.  The overall commercial impression of the marks is similar with both marks conveying a lack of connection.

 

Comparison of the Goods and Services

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).

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely applicant’s ongoing entertainment series about video games and the registrant’s downloadable game software, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).  Please see the following attached third party registrations:  Registration Nos. 4998470, 4495717, 4522320, 5541213, 5841406, 5576334, 5120498, 5857726, 5839935, and 5168250.  It is not unusual for parties offering entertainment services related to video games or children’s entertainment to also offer computer game software under the same mark.

 

Additionally, applicant’s “organizing . . . online shows featuring friends, relationships and the video game and e-sports entertainment industry” is encompassed by the registrant’s broad identification reading “organization of social entertainment events.”

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Accordingly, the applicant’s mark is refused registration under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the identification requirement set forth below.

 

IDENTIFICATION REQUIREMENT

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

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. 

The semi-colons in the proposed Class 35 amendment appears to convey that the applicant is seeking to register use of the mark with the specific goods listed, rather than for retail store services offering those goods.  The proposed amendment identifies the following goods and/or services:  “toy action figures and toy action figure accessories; console game controllers, playing cards; board games; role playing games.”  This portion of the proposed amendment is beyond the scope of the original identification because it specifies goods which were not initially identified in the application.

This may be corrected by replacing the semi-colons with commas, as shown below:

 

On-line retail store services featuring sporting articles, namely, video game and e-sports related sporting articles such as gaming chairs, gaming gloves, shirts, pants, and headwear, toy action figures and toy action figure accessories, console game controllers, playing cards, board games, and role playing games.

 

The proposed amendment to the identification of goods and/or services is not acceptable for the reasons stated in this Office action.  Thus, the previous wording in the existing identification remains operative for purposes of future amendments and for determining the scope of future amendments.  See TMEP §1402.07(d).

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

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

 

The trademark examining attorney is raising a new nonfinal examination issue in this Office action; therefore, jurisdiction remains with the trademark examining attorney.  See 37 C.F.R. §2.141(a); TMEP §714.05-.05(a).  Filing an appeal with the Trademark Trial and Appeal Board would be considered premature at this time.  See TMEP §1501.  Applicant must respond to the trademark examining attorney about the issue(s) raised in this Office action. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

 

/Karla Perkins/

Staff Attorney

Law Office 100

(517) 272-9260

Karla.Perkins@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 February 19, 2020 for

U.S. Trademark Application Serial No. 88126026

 

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. 

 

 

/Karla Perkins/

Staff Attorney

Law Office 100

(517) 272-9260

Karla.Perkins@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 February 19, 2020, 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.”