Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  September 13, 2019

 

 

 

I.

•           Conflicting pending applications (filed since 11/27/2018).

The filing dates of pending U.S. Application Serial Nos. 88315143 and 88320063 precede the applicant’s filing date.  See the referenced applications (in Appendix below).  If the mark in either of the referenced applications registers, the instant applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with that earlier-filed mark.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of the applicant’s response to this Office Action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

In response to this Office Action, the applicant may present arguments in support of registration by addressing the issue of the potential conflict between the instant applicant’s mark and the marks in the referenced earlier-filed applications.  The applicant’s election not to submit arguments at this time in no way limits the applicant’s right to address this issue later if a refusal under Section 2(d) issues.

Action on the instant application likely will be suspended pending the disposition of the referenced applications, upon receipt of the applicant’s response to the following.

 

 II.

 

Exactly as in the applicant’s (nearly-identical) App. Ser. No. 88206561:

 

•           Conflicting pending applications.

The filing dates of pending U.S. Application Serial Nos. 88152504 and 87927048 (both included here because of the applicant’s insufficiently specific “downloadable mobile applications”) and 88164477 precede the applicant’s filing date.  See the referenced applications (attached).  If any of the marks in the referenced applications registers, the instant applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with that earlier-filed mark.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of the applicant’s response to this Office Action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

In response to this Office Action, the applicant may present arguments in support of registration by addressing the issue of the potential conflict between the instant applicant’s mark and the marks in the referenced earlier-filed applications.  The applicant’s election not to submit arguments at this time in no way limits the applicant’s right to address this issue later if a refusal under Section 2(d) issues.

Action on the instant application likely will be suspended pending the disposition of the referenced applications, upon receipt of the applicant’s response to the following.

 

1.        Likelihood-of-confusion refusal.

Registration of the applied-for mark is refused

• as to Classes 16 and 18 and 25 because of a likelihood of confusion with the mark in U.S. Registration Nos. 4686261& 5510512 (see Part A below);
• as to Classes 9 and 41 because of a likelihood of confusion with the marks in U.S. Registration Nos. 2924615 & 2793629 and 4234866 and 3906124 (see Part B below);
• as to Classes 25 and 28 because of a likelihood of confusion with the marks in U.S. Registration Nos. 4178624 and 4231407 (see Part C below).

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the referenced registrations (attached).

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or 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, (a)(vi).

 

A.

Reg. Nos. 4686261& 5510512

            i.        Comparison of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

In the instant case, the applicant’s mark NINJA (and design) is virtually identical to the registered mark NINJA (stylized); thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression.  The only difference in the marks—the particular stylization and presence/absence of a design—does not alter the commercial impression of the marks because this is not discernable from pronunciation.

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

            ii.        Comparison of goods/services.

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)); TMEP §1207.01(a).

The goods and/or services of the parties 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) (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); TMEP §1207.01(a)(i). 

The respective goods and/or services 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).

In the instant case…

·       the applicant’s “stickers,…bumper stickers,…decals [without limitation]” are sufficiently related to the registrant’s “stickers and decals for motorcycles”

·       the applicant’s “backpacks, courier bags, duffle bags, umbrellas, wallets, luggage, all-purpose carrying bags, travel bags” are sufficiently related to the registrant’s overlapping Class 18 goods

·       the applicant’s “clothing, namely, t-shirts and headgear; clothing for men, women, and children, namely, shirts, sport shirts, polo shirts, sweatshirts, sweaters, jerseys, pants, hats, caps, beanies, gloves, hoodies, jackets, shoes, shorts; costumes, namely, clothing to dress up as a team mascot or esports players; sleepwear; loungewear; swimwear; underwear ” are sufficiently related to the registrant’s overlapping Class 25 goods

…so the respective parties’ goods are likely to travel through the same channels of trade to the same classes of purchasers. 

 

B.

Reg. Nos. 2924615 & 2793629 and 4234866 and 3906124

            i.        Comparison of goods/services.

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

The respective goods and/or services 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).

In the instant case, the applicant’s online-game–related goods/services in Classes 9 and 41 are similar in kind and/or closely related to the registrants’ goods/services in those classes (“video game programs for use with video game machines adapted for use with televisions; … video game programs for use with…computers; downloadable computer game software;  ... computer game programs; computer game software video game software; … electronic game programs, namely, video games adapted for use with televisions”; and “game programs running on mobile phones and smart phones including downloadable game programs; game programs running on Personal Digital Assistant (PDA) including downloadable game programs; game programs running on personal computers including downloadable game programs; downloadable game programs [and] providing on-line games via mobile phones, smart phones, PDA or computer networks; providing on-line games”; and “computer application software for mobile phones, namely, downloadable computer game programs”) so the respective parties’ goods are likely to travel through the same channels of trade to the same classes of purchasers. 

 

            ii.        Comparison of marks.

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

In the instant case, the applicant’s mark NINJA (and design) is similar to the registered marks TEAM NINJA & TEAM NINJA and design, NINJA ROYALE, and SUPER NINJA because the literal aspect of the applicant’s mark is a lesser-included element of each of those registered marks; thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression. 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

C.

Reg. Nos. 4178624 and 4231407

            i.        Comparison of goods/services.

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

The respective goods and/or services 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).

In the instant case, the applicant’s Class 25 and Class 28 goods (“Clothing, namely, t-shirts and headgear; Clothing for men, women, and children, namely, shirts, sport shirts, polo shirts, sweatshirts, sweaters, jerseys, pants, hats, caps, beanies, gloves, hoodies, jackets, shoes, shorts; costumes, namely, clothing to dress up as a team mascot or esports players; sleepwear; loungewear; swimwear; underwear” and “playing cards; board games; role playing games; water toys; plush toys; radio control and drone toys; party games [and possibly trading cards for games; see Part 2 below]”) are similar in kind and/or closely related to the registrants’ goods/services (“Clothing, namely, t-shirts, sweatshirts, pants, jackets, footwear, hats, belts, gloves, underwear, long underwear, socks, ski masks, snowboard boots, all for use in skiing, snowboarding, snow sports, fishing, hunting, and outdoor sports, with the exception of motorcycle and all terrain vehicle sports” and “Action skill game; Action target game”) so the respective parties’ goods are likely to travel through the same channels of trade to the same classes of purchasers. 

 

            ii.        Comparison of marks.

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

In the instant case, the literal aspect of the applicant’s mark NINJA and design is similar to (because a lesser-included element of) the registered marks NINJA SUIT and NINJA CARDS; thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression.  The only difference between the applicant’s mark and the registrants’ marks does not alter the commercial impression of the marks because SUIT and CARDS are both disclaimed.

Also, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, because confusion as to source is likely in the instant case, registration is refused under Trademark Act §2(d).  Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

If the applicant responds to the above refusal to register, the applicant must also respond to the following.

 

2.         Identification of goods/services.

An application’s identification of goods/services must be specific, definite, clear, accurate and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01. 

In the instant case, the identification of goods/services is unacceptable as containing indefinite and overbroad wording.  Specifically, “streaming” connotes a service in Class 38, not Class 9 goods; “headphones and computer peripherals used in connection with videogames and videogame systems” belong in Class 28, not Class 9, because (by analogy) per this Office’s ID Manual, “Computer joystick peripherals perform a variety of functions in connection with a computer. Joysticks that are used specifically for playing video or computer games are classified in Class 28 because ‘games and playthings’ appears in the Class 28 Class Heading”—although “Under Nice 11-2017, ‘virtual reality headsets’ are classified in Class 9 regardless of their purpose.”  “Downloadable mobile applications” must specify function and field; “programs” must specify type; “trading cards” belong in Class 16 if collectible ~ or sports ~, but Class 28 if ~ for games, so the applicant must specify which kind(s); “printed books and magazines” must specify field; “home accessories; bath accessories” must specify individually by common commercial name; “headgear” connotes goods in a variety of classes, but “headwear” is acceptable in Class 25 (where “suits” also belongs); “sporting articles such as” is illustrative wording that must be replaced with exhaustive wording; “leagues” must be clarified to recite a cognizable service, and “competitive video game playing [at] corporate events” must clarify whether for entertainment (Class 41) or business (Class 35) purposes.

Accordingly, the applicant must clarify along the lines indicated below.  The applicant may adopt the following identification (to the extent accurate):

IC 009: Audio and video recordings featuring video game playing; Audio and video recording featuring video game playing with commentary and narration; Digital media, namely, streaming and downloadable audiovisual files featuring video game playing; Digital media, namely, streaming and downloadable audiovisual files featuring video game playing with commentary and narration; Cell phone covers; Computer cases; Headphones and computer peripherals used in connection with videogames and videogame systems; Mouse pads; Computer memory devices; Wearable activity trackers; cases for smartphones; Monopods used to take photographs by positioning a smartphone or camera beyond the normal range of the arm; headgear, namely, virtual reality headsets and esports headgear; Downloadable mobile applications for [specify function] in the field of [specify field]

IC 038: streaming of material on the Internet, namely audiovisual files featuring video game playing and audiovisual files featuring video game playing with commentary and narration

IC 016: Printed materials, namely, posters, [specify, e.g., event]programs, comics, [specify collectible or sports]trading cards, stickers, calendars, blank journals, notebooks, notepads, address pads, bumper stickers, postcards, greeting cards, printed invitations, stationery; scrapbooks; photograph albums; activity books; craft books; coloring books; photographs; temporary tattoo transfers; writing instruments; gift wrap paper; decals; printed books in the field of [specify, e.g., esports], and magazines in the field of [specify, e.g., esports]

IC 018: Backpacks, courier bags, duffle bags, umbrellas, wallets, luggage, all-purpose carrying bags, travel bags

IC 021: Beverageware; dinnerware; lunch bags not of paper; household storage containers for food; home accessories, namely [specify individually by common commercial name]; bath accessories, namely [specify individually by common commercial name]

IC 024: Bedding, namely, bed spreads, bed sheets, bed throws, bed linen, bed blankets; linens, namely, table linens, kitchen linens, household linens, bath linens; towels; textile wall hangings; blankets, namely, blanket throws, children's blankets, lap blankets, fleece blankets, blankets for household pets, blankets for outdoor use; comforters; pillow cases; duvets

IC 025: Clothing, namely, t-shirts and headgwear; Clothing for men, women, and ckets, shoes, shorts; costumes, namely, clothing to dress up as a team mascot or esports players; sleepwear; loungewear; swimwearchildren, namely, shirts, sport shirts, polo shirts, sweatshirts, sweaters, jerseys, pants, hats, caps, beanies, gloves, hoodies, jackets, shoes, shorts; costumes, namely, clothing to dress up as a team mascot or esports players; sleepwear; loungewear; swimwear; underwear; esports-related suits and headwear, namely [specify Class 25 goods, e.g., hats]

IC 028: Sporting articles, namely, esports-related sporting articles such asin the nature of gaming gloves, suits, and headwear; Toy action figures and toy action figure accessories; Console game controllers, namely, hand-held game consoles and controllers for game consoles; playing cards; board games; role playing games; water toys; plush toys; radio-controlled toy vehicles and drone toys; party games; Headphones and computer peripherals used in connection with videogames and videogame systems; Gaming headgear adapted for use in playing video games, namely, esports headgear; trading cards for games     

IC 035: On-line retail store services and retail store services featuring a wide variety of general consumer merchandise; endorsement and advertising services, namely, promoting the goods and services of others; administration of community recreational esports leagues; promoting the sale of goods and services of others by means of contests featuring competitive video game playing and eSports, namely, at corporate events

IC 041: Entertainment services, namely, live performances featuring video game playing; Entertainment services, namely, live performances featuring video game playing with commentary and narration; Entertainment production services, namely Arranging, organizing and performing online shows featuring video game playing; Entertainment services, namely, production of an on-going series featuring [indicate subject matter, e.g., video game playing] distributed online; Entertainment services, namely, arranging and conducting live [specify type, e.g., video game playing]performances; Entertainment services in the nature of conducting contests featuring competitive video game playing and eSports, namely, at video game parties, contests, leagues, and at corporate events for entertainment purposes

IC 042: Creating an on-line community for esports athletes for the purpose of connecting players, teams and leagues and organizing game and esports activities

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

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 at http://tmidm.uspto.gov.  See TMEP §1402.04.

 

3.         Fee.

The application identifies goods and/or services that are classified in at least ten classes; however, the applicant’s current fee structure is sufficient for only nine classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.  Therefore, the applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for each additional class. 

If the applicant prosecutes this application as a more-than-nine–, rather than as a nine-, class application, then the applicant must comply with both of the requirements below for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e) or both:

(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

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).

For an overview of the requirements for a multiple-class application based on Section 1(b) or Section 44 or both, and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, the applicant should visit http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

 

 

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  

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

 

 

Mark

        NINJA KIDZ

Pseudo Mark

        NINJA KIDS

Goods and Services

        IC 025. US 022 039. G & S: Beanies; Hats; Sweat shirts; Tee-shirts. FIRST USE: 20170323. FIRST USE IN COMMERCE: 20171025

        IC 041. US 100 101 107. G & S: Entertainment services, namely, an ongoing series featuring family entertainment programs and webisodes provided through the internet. FIRST USE: 20170323. FIRST USE IN COMMERCE: 20170323

Standard Characters Claimed

        STANDARD CHARACTERS CLAIMED

Mark Drawing Code

        (4) STANDARD CHARACTER MARK

Serial Number

        88315143

Filing Date

        February 25, 2019

Current Filing Basis

        1A

Original Filing Basis

        1A

Owner Name and Address

        (APPLICANT) NINJA KIDZ TV, LLC LIMITED LIABILITY COMPANY UTAH c/o Jonathan Katz, Esq., 20 Fifth Avenue New York NEW YORK 10011

Type of Mark

        TRADEMARK. SERVICE MARK

Register

        PRINCIPAL

Live Dead Indicator

        LIVE

Attorney of Record

        Jonathan Katz, Esq.

 

Mark
        NINJA MASK
Goods and Services
        IC 028. US 022 023 038 050. G & S: Toy masks
Standard Characters Claimed
        STANDARD CHARACTERS CLAIMED
Mark Drawing Code
        (4) STANDARD CHARACTER MARK
Serial Number
        88320063
Filing Date
        February 28, 2019
Current Filing Basis
        1B
Original Filing Basis
        1B
Owner Name and Address
        (APPLICANT) Rory Coppock INDIVIDUAL CANADA 210-1565 west 6th Street Vancouver CANADA V6j1R1
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Scott Shaw

 

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 13, 2019 for

U.S. Trademark Application Serial No. 88481530

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 13, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”