United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88469257
Mark: INTERPLAY
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Correspondence Address:
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Applicant: Iterate Studio Inc.
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Reference/Docket No. 7852-11
Correspondence Email Address: |
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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: July 25, 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.
SUMMARY OF ISSUES
- Section 2(d) Refusal – Likelihood of Confusion
- Prior-Filed Application
- Amendment to Identification of Services Required
SECTION 2(d) REFUSAL – 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. 3341724 (INTERPLAY), 5577278 (INTERPLAY SPACE), and 5663180 (INTERPLAY). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant’s mark is “INTERPLAY”, in standard character form, for “Innovation consulting services, namely, advising others in the areas of product development; testing of computer software and hardware, and providing advice, information and reports; research, design, development and implementation of computer software and hardware for use in the fields of digital innovation, new product and technology development; providing temporary use of online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies; Providing temporary use of online non-downloadable software for use in reading and writing computer code; providing temporary use of online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies; providing temporary use of online downloadable software featuring prebuilt software components and templates and artificial intelligence tools for building new technology systems and solutions” in International Class 42.
The registrants’ marks are:
“INTERPLAY” U.S. Registration No. 3341724, in standard character form, for “Apparatus for recording, transmission or reproduction of sound and images; computers; computer peripherals; computer software for use in asset management and for use in editing, encoding, and transcoding sound and images” in International Class 9.
“INTERPLAY SPACE” U.S. Registration No. 5577278, in standard character form, for “Providing co-working, collaboration, and event facilities equipped with private offices, private creative studios, office equipment, receptionist, meeting rooms and also featuring a mailroom, printing center, kitchen, telecommunications equipment and other office amenities, all for business purposes; business information services; incubation services, namely, providing workspace containing business equipment and other amenities to emerging, start-up and existing companies, as well as creatives and artists; business development services, namely, providing start-up support for businesses and creative endeavors of others” in International Class 35.
“INTERPLAY” U.S. Registration No. 5663180, in standard character form, for “Advertising services; Dissemination of advertising for others for display on mobile devices; Distribution of advertising material via mobile computing devices” in International Class 35.
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. In this case, the following factors are the most relevant: similarity of the marks and similarity of the goods and services.
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).
“INTERPLAY” U.S. Registration No. 3341724 & “INTERPLAY” U.S. Registration No. 5663180
In the present case, applicant’s mark is “INTERPLAY” and registrants’ marks are “INTERPLAY” and “INTERPLAY”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services. Id.
Therefore, the marks are confusingly similar.
“INTERPLAY SPACE” U.S. Registration No. 5577278
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).
In this case, the applied-for mark, “INTERPLAY”, and the registered mark, “INTERPLAY SPACE”, are similar in appearance and sound, as both marks begin with the identical term, “INTERPLAY”, creating a similar overall commercial impression.
Therefore, the marks are confusingly similar.
Similarity of the Goods and Services
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
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).
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
“INTERPLAY” U.S. Registration No. 3341724
The attached Internet evidence, consisting of the websites of Apple (www.apple.com), Microsoft (www.microsoft.com), and IBM (www.ibm.com), establishes that the same entity commonly provides both “Apparatus for recording, transmission or reproduction of sound and images; computers; computer peripherals; computer software for use in asset management and for use in editing, encoding, and transcoding sound and images” and also “Innovation consulting services, namely, advising others in the areas of product development; testing of computer software and hardware, and providing advice, information and reports; research, design, development and implementation of computer software and hardware for use in the fields of digital innovation, new product and technology development; providing temporary use of online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies; providing temporary use of online non-downloadable software for use in reading and writing computer code; providing temporary use of online downloadable software featuring prebuilt software components and templates and artificial intelligence tools for building new technology systems and solutions” and markets the goods and services under the same mark. Thus, applicant’s and registrant’s goods and 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).
“INTERPLAY SPACE” U.S. Registration No. 5577278
The attached Internet evidence, consisting of the websites of Denovati Digital (http://denovati.com), Get Up Business Development (www.getupbds.com), and GlobalInvisions (www.giconsulting.com),establishes that the same entity commonly provides both “business development services, namely, providing start-up support for businesses and creative endeavors of others” and also “Innovation consulting services, namely, advising others in the areas of product development; testing of computer software and hardware, and providing advice, information and reports; research, design, development and implementation of computer software and hardware for use in the fields of digital innovation, new product and technology development; providing temporary use of online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies; providing temporary use of online non-downloadable software for use in reading and writing computer code; providing temporary use of online downloadable software featuring prebuilt software components and templates and artificial intelligence tools for building new technology systems and solutions” and markets the services under the same mark. Thus, applicant’s and registrant’s 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).
“INTERPLAY” U.S. Registration No. 5663180
The attached Internet evidence, consisting of the websites of Blackbaud (www.blackbaud.com), Illumination Consulting (http://illuminationconsulting.com), and Social Assurance (http://socialassurance.com),establishes that the same entity commonly provides both “Advertising services; Dissemination of advertising for others for display on mobile devices; Distribution of advertising material via mobile computing devices” and also “Innovation consulting services, namely, advising others in the areas of product development; testing of computer software and hardware, and providing advice, information and reports; research, design, development and implementation of computer software and hardware for use in the fields of digital innovation, new product and technology development; providing temporary use of online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies; providing temporary use of online non-downloadable software for use in reading and writing computer code; providing temporary use of online downloadable software featuring prebuilt software components and templates and artificial intelligence tools for building new technology systems and solutions” and markets the services under the same mark. Thus, applicant’s and registrant’s 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).
Because applicant’s and registrants’ marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
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 mark in the referenced application. 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.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
AMENDMENT TO IDENTIFICATION OF SERVICES REQUIRED
The identification of services contains indefinite wording that must be clarified. TMEP §1402.01.
Applicant must clarify the wording “testing of computer software and hardware, and providing advice, information and reports” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the field of the advice, information, and reports being provided by the applicant.
Applicant must clarify the wording “research, design, development and implementation of computer software and hardware for use in the fields of digital innovation, new product and technology development” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear that the research being provided by the applicant is technological research.
Applicant must clarify the wording “providing temporary use of online downloadable software featuring prebuilt software components and templates and artificial intelligence tools for building new technology systems and solutions” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear that the online software is not downloadable software.
Further, applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 42 for “providing temporary use of online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted services may not later be reinserted. TMEP §1402.07(e).
Suggested Amendments
Applicant may adopt the following suggested amendments, if accurate:
Class 42: Innovation consulting services, namely, advising others in the areas of product development; testing of computer software and hardware, and providing advice, information and
reports in connection therewith;
technological research, design, development and implementation of computer software and
hardware for use in the fields of digital innovation, new product and technology development; providing temporary use of online non-downloadable software for use in designing and developing new
technology, and rapid prototyping of emerging technologies; Providing temporary use of online non-downloadable software for use in reading and writing computer code; providing temporary use of
online non-downloadable software for use in designing and developing new technology, and rapid prototyping of emerging technologies; providing temporary use of online non-downloadable software featuring prebuilt software components and templates and artificial intelligence tools for building new technology systems and
solutions
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.
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.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
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
/Anna C. Burdecki/
Anna C. Burdecki
Trademark Examining Attorney
Law Office 108
Phone: (571)270-1941
anna.burdecki@uspto.gov
RESPONSE GUIDANCE