UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88297966
MARK: MYBOX
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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: CG Technology, L.P.
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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: 5/1/2019
The referenced application has been reviewed by the assigned trademark examining attorney. 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.
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 MYBOX for “Computer gaming and gambling software; computer game software, video game software and electronic game software; computer software for betting and wagering that offers betting and wagering odds and allows users to bet or wager; downloadable computer gaming software, gambling software, and betting software for use on portable or wireless communication devices; downloadable computer game software, video game software, and electronic software for games featuring tournaments, leagues, social games, skill games, promotional games, sweepstakes and contests via global or local computer networks, geo-specific locations, desktop computers and portable or wireless communication devices”.
Registrant’s mark is MI BOX for “software for use with set-top boxes and digital video recorders to transmit, convert, receive, stream, play and view, audio, video, television programming, movies, games,…and multimedia content” and “software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, games, photographs and other digital images, and multimedia content” in Class 09
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)); TMEP §1207.01(b).
In this case, the applicant’s mark is similar in sound, appearance, connotation and commercial impression. Specifically, the applicant has merely replaced the letter “I” in the registered mark with the letter “Y” and removed the space in-between the words in the registered mark. Nonetheless, the marks are similar in sound and appearance.
Moreover, the words are highly similar connotation and commercial impression. The wording “MI” in the registered mark is the Spanish word for “MY”. See translation evidence at http://translate.google.com/#view=home&op=translate&sl=auto&tl=en&text=mi and http://dictionary.cambridge.org/us/translate/. Therefore, the wording in both marks would be understood to mean the same thing. Moreover, the commercial impression created by the marks when used in connection to video game goods and services is similar, namely, that the goods and services of the registrant and applicant are to be used in connection with the consumers own electronic equipment. See dictionary evidence at http://www.merriam-webster.com/dictionary/my, http://www.ahdictionary.com/word/search.html?q=my, http://www.merriam-webster.com/dictionary/box, and http://www.ahdictionary.com/word/search.html?q=box.
Because the marks are similar in sound, appearance, and commercial impression, the marks are confusingly similar
Relatedness of the Goods
In this case, the applicant’s goods are commonly provided by the same parties, under the same marks, and through the same trade channels. See evidence at http://www.xbox.com/en-US/ (offering software to be used with electronic equipment to play games and downloadable and physical copies of game software under the XBOX mark), http://www.playstation.com/en-us/ (offering software to be used with electronic equipment to play games and physical copies of game software under the PS and PLAYSTATION marks), http://www.nintendo.com/ (offering software to be used with electronic equipment to play games and physical copies of game software under the NINTENDO mark), http://www.casino.org/download/ (providing downloadable casino software and software for playing and operating computer games under the SLOTSMANIA mark), and http://www.vegascasinoonline.eu/games.php (providing downloadable casino software and software for playing and operating computer games under the VEGAS CASINO ONLINE mark).
See U.S. Registration Nos.: 5346170, 4716130, 4490475, and 4347317.
Because the goods identified by the applicant and the goods identified by the registrant are commonly provided by the companies under the same marks, the goods are related.
Because the applicant’s mark is confusingly similar to the registrant’s mark, and because the applicant’s goods are related to the goods of the registrant, a likelihood of confusion exists and registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to 2(d) Refusal
AMENDMENT OF THE IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The applicant provided the following identification of goods and services:
Class 09 - |
Computer gaming and gambling software; computer game software, video game software and electronic game software; computer software for betting and wagering that offers betting and wagering odds and allows users to bet or wager; downloadable computer gaming software, gambling software, and betting software for use on portable or wireless communication devices; downloadable computer game software, video game software, and electronic software for games featuring tournaments, leagues, social games, skill games, promotional games, sweepstakes and contests via global or local computer networks, geo-specific locations, desktop computers and portable or wireless communication devices |
Based upon the goods identified by the applicant in this application, and in U.S. Application No. 88299789, the examining attorney has not decided to provide a recommended identification of goods in Class 41. However, if the applicant chooses to amend the identification to identify goods in Class 41, the applicant must follow the multiple class application requirements below.
The applicant may amend the identification of goods and services to the following, if accurate:
Class 09 - |
Downloadable computer gaming and gambling software; Downloadable computer game software, video game software and electronic game software; Downloadable computer software for betting and wagering that offers betting and wagering odds and allows users to bet or wager; downloadable computer gaming software, gambling software, and betting software for use on portable or wireless communication devices; downloadable computer game software, video game software, and electronic software for games featuring tournaments, leagues, social games, skill games, promotional games, sweepstakes and contests via global or local computer networks, geo-specific locations, desktop computers and portable or wireless communication devices |
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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
MULTIPLE CLASS APPLICATION REQUIREMENTS
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that could be classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Mark S. Tratos/
Mark S. Tratos
Trademark Examining Attorney
Law Office 113
(571) 270-3575
Mark.Tratos@uspto.gov
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.