To: | Performance Designed Products LLC (laipdocketing@sheppardmullin.com) |
Subject: | U.S. Trademark Application Serial No. 88410984 - PRISMATIC - 13RZ- 297709 |
Sent: | February 13, 2020 09:42:14 AM |
Sent As: | ecom111@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88410984
Mark: PRISMATIC
|
|
Correspondence Address: SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 333 SOUTH HOPE STREET, 43RD FL.
|
|
Applicant: Performance Designed Products LLC
|
|
Reference/Docket No. 13RZ- 297709
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: February 13, 2020
This Office action is in response to applicant’s communication filed on 1/17/2020.
In a previous Office action(s) dated 7/17/2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 2(d) and 2(e)1.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: Section 2(e)1. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney continues and maintains the 2(d) refusal and presents the following new issue(s) below.
SUMMARY OF ISSUES that applicant must address:
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). 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.
Concurrent Use
Applicant submits a concurrent use argument, but has not complied with concurrent use requirements. See §§TMEP 819.01(q) and 1207.04(d)(i). Please see details below.
Dilution/Weakness of the Marks
Applicant argues that the mark is diluted based submitted third party registrations and internet evidence.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
Applicant has not shown widespread third-party use of similar marks with similar goods and/or services. The evidence is insufficient to show that the mark is diluted.
For unclear reasons, applicant submitted many, many pages of websites that are unrelated to the services and goods at issue. Evidence that PRISM or PRISMATIC is used in connection with bill pay software, wall paper software, news fee software, trampoline parks, and other unrelated goods is irrelevant and does not prove dilution of the mark in connection with video game hardware and software.
Applicant submitted third party registrations of PRISMATIC formative marks, but none of the registrations relate to video games and hardware for playing video games. Evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, the third-party registration submitted by applicant are insufficient to establish that the wording PRISMATIC is weak or diluted.
Applicant has presented a handful of companies that use the wording PRISMATIC in connection with headphones and keyboards, and also Bluetooth earbuds. Applicant has also presented internet evidence consisting of the wording PRISMATIC in connection with video game software and services. The volume of evidence submitted by applicant is not sufficient to establish dilution of the mark.
Similarity of the Marks
Applicant has submitted evidence of registrant’s website to show how the mark is used in commerce. The marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Applicant argues that since its mark is missing the wording “penguins,” the marks have different commercial impressions, and are also different in sight and sound and thus are not confusingly similar. 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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
Channels of Trade
Applicant argues that the goods are not marketed together and therefore confusion as to the source of the goods is unlikely. The evidence of record clearly shows that the goods are marketed together and that source confusion is likely.
In addition to the previously attached evidence showing from major video game suppliers showing that these video game software providers also provide various gaming devices under the same mark, the attached evidence from Stadia and Steam further establishes that the same entity commonly manufactures/produces/provides the relevant goods and/or services and markets the goods and/or services under the same mark and the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and/or services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The following is required for concurrent use applications. TMEP §1207.04(d)(i).
In addition to the requirements for a trademark or service mark application (see TMEP §§801-806.01(e)), a concurrent use application must include a verified statement in which the applicant attests to certain information. See 37 C.F.R. §2.42(b).
The required verified statement must include the following:
(1) the applicant’s goods and/or services, the geographic area in which the applicant is using the mark in commerce, and the mode of use for which the applicant seeks registration;
(2) the concurrent users’ names and addresses, the concurrent user’s goods and/or services, and the registrations issued to or applications filed by the concurrent users (if any), to the extent known by the applicant; and
(3) the geographic areas in which the concurrent user is using the mark in commerce, the mode of use by the concurrent users, and the time periods of such use by the concurrent users, to the extent known by the applicant.
See 15 U.S.C. §§1051(a)(3)(D), 1053; 37 C.F.R. §2.42(b); TBMP §1101.
For a §1(a) application, an applicant must also modify the verified statement required for an unrestricted application under 37 C.F.R. §2.33(b)(1) (see TMEP §804.02) to indicate an exception, i.e., that no other person except as specified in the application has the right to use the mark in commerce. 37 C.F.R. §2.33(f); see 15 U.S.C. §1051(a)(3)(D).
The applicant does not have to insert the information in the list above directly in the verification or declaration at the end of the application; this information may be set forth anywhere in the application as long as it is attested to by the applicant.
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Esther Queen/
Examining Attorney
LO 111
571-272-6695
Esther.Queen@uspto.gov
RESPONSE GUIDANCE