Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88299789 MYBOX(Standard Characters, see http://uspto.report/TM/88299789/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Response to Office Action

 

Applicant CG Technology, L.P. (“Applicant”) submits the following Response to the Non-Final Office action mailed on May 1, 2019 (“Office Action”), issued by Examining Attorney Mark S. Tratos, Law Office 113, regarding the Applicant’s MYBOX service mark (“Applicant’s Mark”). 

I. SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

In the Office Action, the Examining Attorney partially refused registration of the Applicant’s Mark on grounds of an alleged likelihood of confusion with the following U.S. Registration No. 5,256,585 (hereinafter, the “Cited Registration”). 

Cited Mark	Reg. No.	Class - Registered Goods/Services
MI BOX	5,256,585	Class 009:  Telecommunications products, namely, digital set-top boxes and digital video recorders; 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, photographs, digital images and multimedia content; software for use in accessing and online viewing interactive television program guides, wireless networks and electronic communication networks; remote control devices for televisions digital set-top boxes, and video recorders and players; hardware 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; computer hardware and software for use in accessing and viewing interactive television program guides via global computer networks, wireless networks and electronic communication networks; software for the remote programming of audio and video devices via global computer networks, wireless networks and electronic communication networks; downloadable computer software for operating telecommunications products, namely, digital set-top boxes and digital video recorders; downloadable software in the nature of a mobile application for operating telecommunications products, namely, digital set-top boxes and digital video recorders; downloadable music files; downloadable image files in the field of videos, television programming, movies, news and entertainment; radios; electric navigational instruments; screens for photoengraving; slide projectors. Class 038:  Television and video broadcasting and transmission services; broadcasting programs via a global computer network; streaming of audio and video content on the internet; providing access to telecommunication networks; electronic transmission of data via global computer networks, wireless networks and electronic communication networks; television broadcasting and transmission services featuring interactive television viewing functions that permit users to view and share audio files, video files, photographs, images and other multimedia content between and among computers, set-top-boxes, and other audiovisual devices; providing telecommunications connections to a global computer network; teleconferencing services; providing user access to global computer networks; providing access to databases; transmission of digital files.

For the reasons set forth below, Applicant respectfully submits that its mark is not confusingly similar to the Cited Registration and the Section 2(d) refusal should be properly withdrawn.

 When properly viewed in their entireties, Applicant’s Mark and the Cited Mark are sufficiently distinguishable in appearance, sound, connotation, and overall commercial impression to avoid a likelihood of confusion.  The parties’ marks must be viewed in their entireties to determine if confusion is likely.  See Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1269 (T.T.A.B. 2003).  “[T]he test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result.”  H. D. Lee Co., Inc. v. Maidenform, Inc., 87 U.S.P.Q.2d 1715, 1727 (T.T.A.B. 2008).  One must look to the overall impression created by the marks and not merely compare individual features.  Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987) (OATMEAL RAISIN CRISP and APPLE RAISIN CRISP for breakfast cereals not likely to be confused). 

The Cited Mark and Applicant’s Mark differ in appearance.  Cited Registration appears to consumers as two separate words, i.e., MI space BOX.  It is spelled differently than Applicant’s Mark and formatted differently in that it contains a space between the term MI and BOX.  By comparison, Applicant’s Mark is a single, compound, unitary mark, which when viewed in its entirety, forms a new and unique commercial impression that is distinguishable from the Cited Mark.    

The Cited Mark and the Applicant’s Mark differ in sound and meaning.  The Examining Attorney contends that the wording “MI” is the Spanish word for “MY.”  According to Xiaomi Inc., registrant of the Cited Mark, however, “[t]he MI house mark is taken from the Chinese word for ‘rice’” and Xiaomi “promotes its (…) MI products in the press release by referencing its meaning in Chinese.”  Attached as Exhibit A is registrant’s response to the USPTO Office Action filed for the Cited Registration, dated January 28, 2015.  Conversely, Applicant’s Mark carries no meaning as applied to Applicant’s services, as herein amended.  Moreover, “I” appearing in the Cited Mark is pronounced with a short “I” sound and is phonetically similar to the pronunciation of the English letter “e.”  Attached as Exhibit B is a Chinese-to-English translation of the term MI, including a phonetic pronunciation key.  By contrast, “Y” appearing in Applicant’s Mark is pronounced with a long “I” sound.  Attached as Exhibit C is an English dictionary definition of the term MY, including a phonetic pronunciation key.  

Applicant further submits that there is no likelihood of confusion between the Cited Mark and Applicant’s Mark, due to the differences in the Applicant’s and Xiaomi’s services, trade channels, and consumer bases.  Applicant’s specification of services, as amended, does not conflict with the Cited Mark’s scope of protection.  To further illuminate the absence of confusion between the Applicant’s MYBOX mark and Xiaomi’s mark, Applicant has amended its specification of services to more narrowly specify its betting, wagering and related services as shown in Section II below. 

Applicant’s services, as amended, and the services under the Cited Registration are sufficiently dissimilar to avoid a likelihood of confusion.  As indicated in the description of goods/services, Xiaomi’s offerings consist of telecommunications services, set-top boxes and downloadable computer software for use therewith.  In fact, Xiaomi’s goods/services are in connection with set-top hardware devices for home consumers to access third party streaming content.  See Exhibit D attached hereto (Xiaomi’s prior specimen of use for MI BOX).  By comparison, Applicant offers betting, wagering and related services to sophisticated betting consumers in casino, betting and wagering environments, and not to home consumers.  Applicant’s MYBOX services are not related to set-top boxes or software for use therewith.  Therefore, Applicant’s MYBOX services are not in the same trade channel as the services for the MI BOX mark.  Given the differences between the Applicant’s services, as amended, and the services under the Cited Registration, it is not likely that consumers would confuse the source of services for MI BOX and MYBOX marks.

 

II. IDENTIFICATION OF SERVICE 

The Examining Attorney requested an amendment to Applicant’s identification of services.  Applicant has amended the identification of services in this electronic filing responsive to this requirement and to further illuminate the absence of confusion between the Applicant’s Mark and the Cited Mark referenced in the Office Action.  The amended identification of services should now read as: 

Amended Class 041 Services:  Providing entertainment information in the field of sports and sporting events; sporting and cultural activities, namely, provision of information relating to organizing sporting and cultural activities; betting and wagering services; providing entertainment information in the field of betting; entertainment services, in the nature of wagering and betting services, namely, arranging, organizing, conducting, and accepting bets prior to and during various competitions and events including sporting events.

 III.CONCLUSION

Given the amendments submitted herewith with respect to Applicant’s specification of Class 041 services, the differences in the overall commercial impression of the Applicant’s Mark and the Cited Mark referenced in the Office Action, the differences between the Applicant’s services from the goods and services of the Cited Mark referenced in the Office Action, as well as for other reasons set forth above, Applicant respectfully submits it has addressed all outstanding issues relating to the present Application, and respectfully requests that the Examining Attorney enter its amendments to the specification of services and withdraw the refusal under Section 2(d) of the Lanham Act.

 

EVIDENCE
Evidence in the nature of Office action response with exhibit and internet web pages has been attached.
Original PDF file:
evi_14810646-20191101155802033082_._Exhibit_A.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_14810646-20191101155802033082_._Exhibit_B.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_14810646-20191101155802033082_._Exhibit_C.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_14810646-20191101155802033082_._Exhibit_D.pdf
Converted PDF file(s) ( 21 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, gambling and betting services, and computer, video, casino, and electronic gaming services; wagering services; betting and wagering services; entertainment services, namely, the provision of online computer, video, casino, and electronic gaming, gambling, and betting services; entertainment services, namely, providing online interactive, non-downloadable computer games, video games, and electronic games featuring tournaments, 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; entertainment services, namely, providing temporary use of non-downloadable computer and electronic games; providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, and leagues; entertainment services, namely, computer, video, casino and electronic gaming, betting and wagering services provided via portable or wireless communication devices same as above, but provided wirelessly; providing entertainment information in the fields of gambling, betting, and computer, video, casino and electronic gaming; providing entertainment information in the field of computer, video, casino and electronic gaming; providing entertainment information in the field of interactive casino games, electronic games, computer games and video games; providing entertainment information in the field of sports and sporting events; sporting and cultural activities, namely, provision of information relating to organizing sporting and cultural activities, contests and games; entertainment services, in the nature of wagering and betting services, namely, arranging, organizing, conducting, and accepting bets prior to and during various competitions and events including sporting events
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Entertainment services, namely, gambling and betting services, and computer, video, casino, and electronic gaming services; Providing entertainment information in the field of sports and sporting events; wagering services; sporting and cultural activities, namely, provision of information relating to organizing sporting and cultural activities; betting and wagering services; entertainment services, namely, the provision of online computer, video, casino, and electronic gaming, gambling, and betting services; providing entertainment information in the field of betting; entertainment services, namely, providing online interactive, non-downloadable computer games, video games, and electronic games featuring tournaments, 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; entertainment services, in the nature of wagering and betting services, namely, arranging, organizing, conducting, and accepting bets prior to and during various competitions and events including sporting events.; entertainment services, namely, providing temporary use of non-downloadable computer and electronic games; providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, and leagues; entertainment services, namely, computer, video, casino and electronic gaming, betting and wagering services provided via portable or wireless communication devices same as above, but provided wirelessly; providing entertainment information in the fields of gambling, betting, and computer, video, casino and electronic gaming; providing entertainment information in the field of computer, video, casino and electronic gaming; providing entertainment information in the field of interactive casino games, electronic games, computer games and video games; sporting and cultural activities, namely, provision of information relating to organizing sporting and cultural activities, contests and games; entertainment services, in the nature of wagering and betting services, namely, arranging, organizing, conducting, and accepting bets prior to and during various competitions and events including sporting eventsClass 041 for Providing entertainment information in the field of sports and sporting events; sporting and cultural activities, namely, provision of information relating to organizing sporting and cultural activities; betting and wagering services; providing entertainment information in the field of betting; entertainment services, in the nature of wagering and betting services, namely, arranging, organizing, conducting, and accepting bets prior to and during various competitions and events including sporting events.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /OE/     Date: 11/01/2019
Signatory's Name: Olga Egorova
Signatory's Position: Chief Technology Counsel

Signatory's Phone Number: (212) 829-7063

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88299789
Internet Transmission Date: Fri Nov 01 17:07:04 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.X-201911011707040522
07-88299789-700a7b3b07a6ad3721c46768619b
d0e2e46f45b068fac3557f9e1c9f995b2d71-N/A
-N/A-20191101162703003421