To: | Proletariat Inc. (snweller@mintz.com) |
Subject: | U.S. Trademark Application Serial No. 88268947 - SPELLBREAK - 056330403T01 |
Sent: | September 22, 2020 02:52:41 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88268947
Mark: SPELLBREAK
|
|
Correspondence Address: |
|
Applicant: Proletariat Inc.
|
|
Reference/Docket No. 056330403T01
Correspondence Email Address: |
|
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: September 22, 2020
On July 17, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 86107563. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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 SPELLBREAK for the following goods and services, as amended:
“Downloadable computer and video game programs; downloadable computer and video game software; downloadable multiplayer computer and video game programs; downloadable multiplayer computer and video game software; downloadable computer programs enabling users to participate in discussions and online chat, to register for promotional offers, to participate in contests and to access social networks” in Class 9, and
“Providing online non-downloadable computer and video game software; Providing online non-downloadable multiplayer computer and video game software; Providing online non-downloadable computer programs enabling users to participate in discussions and online chat, to register for promotional offers, to participate in contests and to access social networks” in Class 41.
Registrant’s mark is BREAK THE SPELL for the following goods and services:
“Computer software and firmware for games of chance on any computerized platform, including slot machines, and video lottery terminals; Downloadable software and computer programs for playing casino games, slot games, lottery games, online wagering games and online electronic games; Downloadable electronic game programs and software” in Class 9, and
“Reconfigurable casino and lottery gaming equipment, namely, gaming machines” in Class 28, and
“Entertainment services, namely, providing online electronic games; Entertainment services, namely, providing temporary use of non-downloadable electronic games” in Class 41.
Similarity 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).
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).
Here, applicant’s mark is comprised of the compressed terms “SPELL” and “BREAK”, SPELLBREAK, and registrant’s mark is BREAK THE SPELL. The marks share the identical terms “SPELL” and “BREAK”. While the terms appear in a different order in the applicant’s mark than in the registrant’s, the difference in ordering does not obviate the likelihood of confusion in this case.
Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions. TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil). Here, the applicant’s presentation of the wording in a different order than appears in registrant’s mark does not change the highly similar commercial impression formed by the shared terms “SPELL” and “BREAK”, which retain their meaning regardless of ordering. Applicant’s lack of spacing between the terms also does not obviate the similar connotation and overall similar commercial impression of the marks.
Applicant’s and registrant’s marks share the wording “SPELL” and “BREAK”. The terms being presented in a different order and without spacing between the terms in applicant’s mark does not obviate the similar connotation and overall commercial impression formed by applicant’s and registrant’s marks. Therefore, the marks are confusingly similar.
Similarity of the Goods and Services
The compared goods and 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).
Applicant’s goods and services at issue are as follows:
“Downloadable computer and video game programs; downloadable computer and video game software; downloadable multiplayer computer and video game programs; downloadable multiplayer computer and video game software; downloadable computer programs enabling users to participate in discussions and online chat, to register for promotional offers, to participate in contests and to access social networks”
“Providing online non-downloadable computer and video game software; Providing online non-downloadable multiplayer computer and video game software; Providing online non-downloadable computer programs enabling users to participate in discussions and online chat, to register for promotional offers, to participate in contests and to access social networks” in Class 41.
Registrant’s goods and services at issue are as follows:
“Computer software and firmware for games of chance on any computerized platform, including slot machines, and video lottery terminals; Downloadable software and computer programs for playing casino games, slot games, lottery games, online wagering games and online electronic games; Downloadable electronic game programs and software” in Class 9, and
“Entertainment services, namely, providing online electronic games; Entertainment services, namely, providing temporary use of non-downloadable electronic games” in Class 41.
In this case, the registration uses broad wording to describe “downloadable electronic game programs and software” in Class 9, which presumably encompasses all goods of the type described, including applicant’s more narrow “downloadable computer and video game programs; downloadable computer and video game software; downloadable multiplayer computer and video game programs; downloadable multiplayer computer and video game software; downloadable computer programs enabling users to participate in discussions and online chat, to register for promotional offers, to participate in contests and to access social networks.” Registrant’s downloadable game programs are broad enough to encompass applicant’s software for contests, which may include gaming contests. Further, as to Class 41, registrant’s “entertainment services, namely, providing online electronic games; entertainment services, namely, providing temporary use of non-downloadable electronic games” are broad enough to encompass applicant’s “providing online non-downloadable computer and video game software; providing online non-downloadable multiplayer computer and video game software; providing online non-downloadable computer programs enabling users to participate in discussions and online chat, to register for promotional offers, to participate in contests and to access social networks.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods and service are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and services are related.
Because the applied-for mark so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the related goods and services of the applicant and registrant, registration of the applied-for mark must be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Requirements resolved. The following requirements raised in the Office action of April 4, 2019 are satisfied as per the suspension letter of July 17, 2019:
• Definite identification of goods and services provided
• Multiple-class application requirements satisfied
See TMEP §713.02.
RESPONSE INFORMATION
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
/Cheryl Kluwe/
Cheryl Kluwe
Examining Attorney
Law Office 126
(571) 270-3839
cheryl.kluwe@uspto.gov
RESPONSE GUIDANCE