United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88472639
Mark: JACKPOT JOYRIDE
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Correspondence Address:
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Applicant: Synergy Blue
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Reference/Docket No. N/A
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: August 21, 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 FOR LIKELIHOOD OF CONFUSION
Applicant’s applied-for mark is JACKPOT JOYRIDE in standard characters for “Computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, software for games; computer game software; interactive game programs; interactive game software” in International Class 9.
The mark in U.S. Registration No. 4409007 is JACKPOTJOY in standard characters for, in relevant part, “Computer game software; computer game software featuring card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer hardware relating to games, card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer software to enable searching, browsing and retrieving information, websites, and other resources available on global computer networks for others; downloadable computer game programs and downloadable electronic game programs; interactive video game programs; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media and information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the Internet or other communications networks; electronic game software and computer game application software that may be downloaded via the Internet, computers, and wireless devices; computer hardware relating to games, card games, slot games, video games, gaming, gambling, casino, bingo, instant win games, lottery and betting activities” in International Class 9, and “Games and playthings, namely, slot machines; scratch cards for playing lottery games; playing cards; electronic or electrotechnical gaming apparatus, namely, gaming machines; machines for playing games of chance; games involving gambling, namely, slot machines and gaming machines; slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media; card games” in International Class 28.
The mark in U.S. Registration No. 4535356 is JACKPOTJOY featuring a design element for, in relevant part, “Computer game software; computer game software featuring card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer hardware relating to games, card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer software to enable searching, browsing and retrieving information, websites, and other resources available on global computer networks for others; downloadable online game software and game related applications, namely, downloadable computer game programs and downloadable electronic game programs; interactive video game programs; computer software for conducting and administration of on-line games, gambling and competitions” in International Class 9, and “Games and playthings, namely, slot machines; scratch card lottery games; playing cards; electronic or electrotechnical gaming apparatus, namely, gaming machines; machines for playing games of chance; games involving gambling, namely, slot machines and gaming machines; slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media” in International Class 28.
The mark in U.S. Registration No. 5666643 is JOYRIDE in standard characters for, in relevant part, “Video game software for mobile devices, personal computers, consoles, tablets; downloadable electronic game programs; video game programs; computer software platforms for social networking; downloadable computer game programs; computer game software; interactive game software; interactive game programs; computer game software; electronic game programs; game software for use on any computerized platform, including the internet, computers, media players, handheld electronic devices, electronic entertainment devices, telecommunications devices, mobile phones, cellular phones, electronic communication devices, wireless devices, portable and handheld electronic devices or personal digital assistant devices; downloadable interactive, computer, video and electronic game programs; downloadable electronic game programs and computer software platforms for social networking that may be accessed via any computerized platform, including the internet, computers, media players, handheld electronic devices, electronic entertainment devices, telecommunications devices, mobile phones, cellular phones, electronic communication devices, wireless devices, portable and handheld electronic devices or personal digital assistant devices” in International Class 9.
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 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. 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.
Similarity of the Marks
Applicant’s applied-for mark is JACKPOT JOYRIDE in standard characters. The mark in U.S. Registration No. 4409007 is JACKPOTJOY in standard characters. The mark in U.S. Registration No. 4535356 is JACKPOTJOY featuring a design element. The mark in U.S. Registration No. 5666643 is JOYRIDE in standard characters. Here, applicant’s mark shares similar terms as the compared marks and create a similar overall commercial impression.
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).
Additionally, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element, such as U.S. Registration No. 4535356, generally will not avoid likelihood of confusion with a mark in typed or standard characters, such as applicant, because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Therefore, applicant’s mark is similar to the registered marks.
Relatedness of the Goods
In re U.S. Registration Nos. 4409007 and 4535356
Applicant’s goods are for “Computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, software for games; computer game software; interactive game programs; interactive game software” in International Class 9.
The goods in U.S. Registration No. 4409007 are for, in relevant part, “Computer game software; computer game software featuring card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer hardware relating to games, card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer software to enable searching, browsing and retrieving information, websites, and other resources available on global computer networks for others; downloadable computer game programs and downloadable electronic game programs; interactive video game programs; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media and information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the Internet or other communications networks; electronic game software and computer game application software that may be downloaded via the Internet, computers, and wireless devices; computer hardware relating to games, card games, slot games, video games, gaming, gambling, casino, bingo, instant win games, lottery and betting activities” in International Class 9, and “Games and playthings, namely, slot machines; scratch cards for playing lottery games; playing cards; electronic or electrotechnical gaming apparatus, namely, gaming machines; machines for playing games of chance; games involving gambling, namely, slot machines and gaming machines; slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media; card games” in International Class 28.
The goods in U.S. Registration No. 4535356 are for, in relevant part, “Computer game software; computer game software featuring card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer hardware relating to games, card games, slot games, video games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer software to enable searching, browsing and retrieving information, websites, and other resources available on global computer networks for others; downloadable online game software and game related applications, namely, downloadable computer game programs and downloadable electronic game programs; interactive video game programs; computer software for conducting and administration of on-line games, gambling and competitions” in International Class 9, and “Games and playthings, namely, slot machines; scratch card lottery games; playing cards; electronic or electrotechnical gaming apparatus, namely, gaming machines; machines for playing games of chance; games involving gambling, namely, slot machines and gaming machines; slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media” in International Class 28.
Here, applicant’s and registrant’s goods are related.
In this case, the goods in the application and registrations are identical for computer game software. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Additionally, in this case, the registrations use broad wording to describe computer game software, which presumably encompasses all goods of the type described, including applicant’s more narrow computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, software for games. Further, the application uses broad wording to describe interactive game programs, which presumably encompasses all goods of the type described, including registrant’s more narrow interactive video game programs. 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 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 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 are related.
Further, the attached Internet evidence consists of website screenshots from www.sggaming.com (offers gaming software and gaming machines), www.igt.com (offers gaming software and gaming machines), and http://www.aristocrat.com/ (offers gaming software and gaming machines). This evidence establishes that the same entity commonly manufactures or provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods 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).
In re U.S. Registration No. 5666643
Applicant’s goods are for “Computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, software for games; computer game software; interactive game programs; interactive game software” in International Class 9.
The goods in U.S. Registration No. 5666643 are for, in relevant part, “Video game software for mobile devices, personal computers, consoles, tablets; downloadable electronic game programs; video game programs; computer software platforms for social networking; downloadable computer game programs; computer game software; interactive game software; interactive game programs; computer game software; electronic game programs; game software for use on any computerized platform, including the internet, computers, media players, handheld electronic devices, electronic entertainment devices, telecommunications devices, mobile phones, cellular phones, electronic communication devices, wireless devices, portable and handheld electronic devices or personal digital assistant devices; downloadable interactive, computer, video and electronic game programs; downloadable electronic game programs and computer software platforms for social networking that may be accessed via any computerized platform, including the internet, computers, media players, handheld electronic devices, electronic entertainment devices, telecommunications devices, mobile phones, cellular phones, electronic communication devices, wireless devices, portable and handheld electronic devices or personal digital assistant devices” in International Class 9.
Here, applicant’s and registrant’s goods are related.
In this case, the goods in the application and registration are identical for computer game software, interactive game software, and interactive game programs. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Also, in this case, the registration uses broad wording to describe computer game software, which presumably encompasses all goods of the type described, including applicant’s more narrow computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, software for games. 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 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)).
In summary, the applicant’s and registrants’ marks create the same commercial impression and the respective goods are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “JACKPOT” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam Webster dictionary defines “JACKPOT” as “the top prize in a game or contest (such as a lottery) that is typically a large fund of money formed by the accumulation of unwon prizes” and “a combination on a slot machine that wins a top prize or all the coins available for paying out”. Thus, the wording merely describes a feature of applicant’s goods in that applicant’s game software feature this highest possible prize.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “JACKPOT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICAITON OF GOODS AND/OR SERVICES REQUIREMENT
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may adopt the following wording, if accurate:
International Class 9: Computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, downloadable computer software for games; downloadable computer game software; downloadable interactive game programs software; downloadable interactive game software
International Class 41: Computer application software for smartphones, mobile phones, portable media players, handheld computers, personal computers, namely, providing a website featuring non-downloadable software for games; Providing a website featuring non-downloadable computer game software; Providing a website featuring non-downloadable interactive game programs software; Providing a website featuring non-downloadable interactive game software
Scope Advisory
ID Manual Online
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.
Please see the multiple-class application requirements below.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. 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
Applicant May Wish to Hire Trademark Counsel
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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
/LaShawnda Elliott/
LaShawnda Elliott
Trademark Examining Attorney
Law Office 125
(571) 272-5409
lashawnda.elliott@uspto.gov
RESPONSE GUIDANCE
