UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 1/22/2019

 

The undersigned trademark examining attorney has reviewed the referenced application. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Registration Refused – Likelihood Of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2888095, 3463757, 4130978, 4169315, 4865329, 5057879 and  5174086. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

 

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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Applicant’s proposed mark is PLAYGROUND for a variety of goods and services comprising and relating to electronic games. Specifically, the identification currently reads: entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic games; video recordings featuring electronic games; pre-recorded films featuring electronic games; animated films; motion picture films featuring electronic games; entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks, providing educational and instructional services relating to video games and providing information thereon; entertainment services, namely, providing online electronic games; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks, providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information and advisory and consultancy services relating to all of the foregoing; computer software design; designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; design, programming, and maintenance of software for consumer video games; updating of entertainment software; information and advisory and consultancy services relating to all of the foregoing.

 

The registered marks are:

 

2888095: ELECTRIC PLAYGROUND for, in relevant part, video and audio production in the field of interactive entertainment; providing information via a website concerning video games;

3463757: EA PLAYGROUND for computer game software; computer game software and manuals sold as a unit; computer video game software; computer video game software and manuals sold as a unit; interactive video game programs; interactive computer game programs;

4130978: MATH PLAYGROUND (with “MATH” disclaimed) for education services, namely, providing on-line instructional activities and nondownloadable videos in the field of math education; Providing on-line educational computer games in the field of math education;

4169315: VIRTUAL CITY PLAYGROUND (with “VIRTUAL CITY
 disclaimed) for computer game programs; computer game software; computer game software downloadable from a global computer network; computer game software for personal computers and home video game consoles; computer programs for video and computer games; downloadable computer game programs; downloadable computer game software via a global computer network and wireless devices; downloadable electronic game programs; electronic game programs; electronic game software; electronic game software for cellular telephones; electronic game software for handheld electronic devices; electronic game software for wireless devices; game software; interactive game software; interactive multimedia computer game program; interactive video game programs; video game software;

4865329: PLAYGROUND GAMES & Design for entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic games; video recordings featuring electronic games; pre-recorded films featuring electronic games; animated films; motion picture films featuring electronic games; entertainment software services, namely, providing online non-downloadable electronic game software; provision of entertainment software, namely, online non-downloadable electronic game software by means of local computer networks, the Internet, cable or wire communications services and wireless telecommunications services; information and advisory and consultancy services relating to all of the foregoing; designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; updating of entertainment software; information and advisory and consultancy services relating to all of the foregoing;

5174086: THE DEVIL’S PLAYGROUND for entertainment services, namely, providing temporary use of non-downloadable slot games software played via global computer network and online social networks;

5057879: PLAYGROUND POKER (with “POKER” disclaimed) for, in relevant part, entertainment services, namely, organizing and conducting poker games, poker leagues, poker tournaments, and poker teams; providing news and information related to the game of poker and poker activities; providing poker facilities in the nature of a poker hall and providing poker club services.

 

The marks are all very similar in that they share the distinctive term PLAYGROUND. 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). While each of the registered marks includes wording and design elements other than PLAYGROUND that allows them to co-exist, applicant’s proposed mark does not.

 

Moreover, the registered goods and services all comprise or relate to electronic games.

 

Consequently, there is a likelihood of confusion, and a refusal to register pursuant to Section 2(d) is appropriate in this case. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Prior Pending Applications

 

The filing dates of pending U.S. Application Serial Nos. 86705445 and 86705562 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant Must Amend The Identification

 

Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the goods and services.

 

The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that appears within brackets offers guidance. And wording that should be deleted is shown with a line through it as follows: strikethrough. Applicant should enter amendments in standard font, not in bold, italics or strikethrough or within brackets.

 

Applicant may adopt the following identification, if accurate:

 

“Entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic games sound effects {It is unclear how sound recordings can feature electronic games. Applicant must clarify.}; video recordings featuring electronic games tournaments {It is unclear how video recordings can feature electronic games. Applicant must clarify.}; pre-recorded motion picture films featuring electronic games tournaments {It is unclear how films can feature electronic games. Applicant must clarify.}; animated motion picture films about {indicate subject matter}; motion picture films featuring electronic games tournaments {It is unclear how films can feature electronic games. Applicant must clarify.},” in International Class 9;

 

“Entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks,; providing educational and instructional services, namely, {specify what the services are, e.g., classes and seminars} relating to video games and providing information thereon about the video games; entertainment services, namely, providing online electronic games; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks,; providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information, and advisory and consultancy services relating to all of the foregoing,” in International Class 41; and

 

“Computer software design; designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; design, programming, and maintenance of software for consumer video games; updating of entertainment software; information, and advisory and consultancy services relating to all of the foregoing,” in International Class 42.

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification. However, applicant may not substitute different goods or services or add goods or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods or services will further limit scope, and once goods or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID Manual. See TMEP §1402.04.

 

TEAS RF Application 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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571.270.1528

katherine.chang@uspto.gov

 

 

 

TO RESPOND: Go to response forms and choose option #1. 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 TSDR. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact TrademarkAssistanceCenter@uspto.gov or call 800-786-9199. For more information on checking status, see status and documents.

 

TO UPDATE CORRESPONDENCE ADDRESS: Use the change of address form.

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/22/2019 FOR U.S. APPLICATION SERIAL NO. 88177012

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/22/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.