To: | NCsoft corporation (patent@park-law.com) |
Subject: | U.S. Trademark Application Serial No. 88176534 - SPOONZ - TM1223US00 |
Sent: | October 19, 2020 05:40:52 AM |
Sent As: | ecom114@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 Attachment - 30 Attachment - 31 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88176534
Mark: SPOONZ
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Correspondence Address: |
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Applicant: NCsoft corporation
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Reference/Docket No. TM1223US00
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.
Issue date: October 19, 2020
SUMMARY OF ISSUES
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 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.
Applicant’s mark is SPOONZ for “Office requisites, except furniture, namely, sticky pads, masking tapes, book clips, paper trimmers, staple removers, staplers, and paper folding machines; notepads, school supplies, namely, pencils, folders, and stationery; pens, periodicals, namely, general feature magazines; books, namely, coloring books, planner, composition books, and sketch books; diaries; paper bags for packaging, money clips, passport holders, and glue for stationery or household purposes; card cases, namely, cases specially adapted for note cards,” in International Class 016.
Registrant’s mark is SPOON for “Posters and postcards,” in International Class 016, in relevant part.
Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s mark is highly similar to the cited registration in sound, appearance and commercial impression where the marks share the term SPOON and the only difference between the marks is the addition of the “Z” to the applied-for mark. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
As such, the marks are confusingly similar.
Comparison of the Goods
In the present case, applicant lists “Office requisites, except furniture, namely, sticky pads, masking tapes, book clips, paper trimmers, staple removers, staplers, and paper folding machines; notepads, school supplies, namely, pencils, folders, and stationery; pens, periodicals, namely, general feature magazines; books, namely, coloring books, planner, composition books, and sketch books; diaries; paper bags for packaging, money clips, passport holders, and glue for stationery or household purposes; card cases, namely, cases specially adapted for note cards,” in International Class 016. These goods are highly similar to the goods listed in the cited registration where entities that provide posters and post cards also often provide applicant’s goods under the same mark. See attached evidence from Staples (STAPLES and PACON products), Michaels (ELMER’S products).
Because the marks are similar and the goods are related, it is likely that consumers would believe that the goods emanate from a common source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
AMENDED IDENTIFICATION OF GOODS REQUIRED
In a previous Office Action dated December 18, 2018, applicant was required to amend the identification of goods. In the response dated June 18, 2019, applicant amended the identification as follows:
§ “Office requisites, except furniture, namely, sticky pads, masking tapes, book clips, paper trimmers, staple removers, staplers, and paper folding machines; notepads, school supplies, namely, pencils, folders, and stationery; pens, periodicals, namely, general feature magazines; books, namely, coloring books, planner, composition books, and sketch books; diaries; paper bags for packaging, money clips, passport holders, and glue for stationery or household purposes; card cases, namely, cases specially adapted for note cards,” in International Class 016.
The wording “sticky pads,” “book clips,” “staplers,” and “planner” in the identification are indefinite and must be clarified because it fails to identify specific goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following wording, if accurate:
Note that proposed changes are indicated in bold. Wording that should be deleted is shown with a line through it as follows: strikethrough. Some items require applicant to include more complete information. These are designated with a blank space ______ followed by bold braces
{ } and italicized explanatory text. The information in the braces is suggested as an example for applicant to follow, not to merely
be “cut and pasted”. Applicant should enter amendments in standard font, not in bold, italics or strikethrough. Furthermore, no braces should be included in applicant’s amended identification.
Applicant should also note that the above identification is merely a suggestion and applicant is responsible for providing an accurate and acceptable identification.
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.
RESPONSE ADVISORIES
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.
/Breanna Freeman/
Examining Attorney
Law Office 114
571-272-7099
breanna.freeman@uspto.gov
RESPONSE GUIDANCE