To: | Marvel Characters, Inc. (trademarks@disney.com) |
Subject: | U.S. Trademark Application Serial No. 88524690 - MARVEL LOKI - N/A |
Sent: | October 08, 2019 03:23:12 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88524690
Mark: MARVEL LOKI
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Correspondence Address: |
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Applicant: Marvel Characters, Inc.
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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: October 08, 2019
The referenced application has been reviewed by the assigned trademark examining attorney.
Summary of Issues
Applicant must respond timely and completely to the following issues:
1. Trademark Act Section 2(d) - Likelihood of Confusion Refusal to Register
2. Earlier Filed Pending Application
3. Clarification of Identification and Classification of Goods and Services Required
15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
1. Trademark Act Section 2(d) – Likelihood of Confusion Refusal to Register
U.S. Registration No. 5751921 is LOKI in standard characters for goods and services including “Downloadable software in the nature of a mobile application for news and information in the field of current events.”
U.S. Registration No. 3175261 is MARVEL in standard characters for “Software, namely software for distributed seismic processing and velocity model building.”
The applied-for mark is MARVEL LOKI for “Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media; audio books; audio and visual recordings; video game software; computer programs and software; downloadable electronic publications; downloadable game software; downloadable mobile applications; consumer electronics and accessories therefor; eyeglasses and sunglasses and accessories therefor; binoculars; decorative magnets; graduated rulers; microphones; helmets; flotation vests; protective face masks not for medical purposes; snorkels; swimming goggles; swim masks.”
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.
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).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
The wording that comprises the registered mark in U.S. Registration No. 5751921, LOKI, also appears in the applied-for mark. 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).
Related Goods/Services
The goods and/or 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).
Applicant’s identification includes the broadly worded “computer programs and software” and “downloadable mobile applications.” Software that is identified without restriction or limitation as to the purpose or function is presumed to encompass all goods of that type, including more specifically identified software. See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1207.01(a)(iii). Thus applicant’s software is presumed to be identical to the more specifically identified software in the registrations.
Conclusion
Given the similarity of the marks and the relatedness of the goods, consumers are likely to confuse the source of the goods set forth in the application and the registrations. Accordingly, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
2. Earlier Filed Pending Application
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.
If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
3. Clarification of Identification and Classification of Goods and Services Required
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).
Additional wording requiring clarification and examples of acceptable amendments are set forth below.
Sample Amended Identification
A sample amended identification is set forth below, which applicant may adopt, if accurate to describe applicant’s goods and/or services. Wording in italic type represents items in the identification that require clarification. Bold italic type indicates changes to applicant’s original identification. Strikethrough marking indicates wording that must be deleted. Wording in [brackets] following a
fill in the blank provides guidance and examples of acceptable amendments. For example, if the original identification is “clothing,” and the
suggestion is “clothing, namely, ____ [specify items in this class, e.g., shirts, pants and coats]”, applicant may amend the identification to “clothing,
namely, shirts, pants and coats” in the response to the office action.
International Class 3: Accessories for eyeglasses and sunglasses, namely, ____ [specify type of accessories in this class, e.g., eyeglass wipes impregnated with cleaning solution]
International Class 6: Consumer electronics and accessories therefor, namely, ____ [specify items in this class, e.g., electronic safes]
International Class 7: Consumer electronics and accessories therefor, namely, ____ [specify items in this class, e.g., clothes washing machines]
International Class 9: Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media, namely, ____ [specify type and content, e.g., pre-recorded DVDs featuring action movies, blank computer hard drives]; audio books in
the field of ____ [specify subject, e.g., fiction novels]; audio and visual recordings featuring ____ [specify subject, e.g., music performances]; video game software, ____ [specify format in this class, e.g., downloadable]; computer programs and software, namely, ____
[specify format in this class and function/field, e.g., recorded computer game software, downloadable computer software for photo and video editing]; downloadable electronic
publications, namely, ____ [specify type of publication and subject, e.g., comic books, magazines in the field of entertainment]; downloadable game software; downloadable mobile applications for ____ [specify function/field, e.g., playing online games]; consumer electronics and accessories therefor, namely,
____ [specify items in this class, e.g., computers and blank hard drives, cameras and tripods]; eyeglasses, and sunglasses, and
accessories, namely, ____ [specify type of accessories, e.g., cases] therefor; binoculars; decorative magnets; graduated rulers; microphones; helmets, namely, ____ [specify type in this class, e.g., safety helmets, sports helmets]; flotation vests; protective face masks not for medical purposes; snorkels;
swimming goggles; swim masks
International Class 11: Consumer electronics and accessories therefor, namely, ____ [specify items in this class, e.g., electric coffee machines, clothes dryers]
International Class 16: Consumer electronics and accessories therefor, namely, ____ [specify items in this class, e.g., electronic typewriters, label printing machines]
International Class 21: Accessories for eyeglasses and sunglasses, namely, ____ [specify type of accessories in this class, e.g., eyeglass cleaning cloths]
International Class 28: Helmets, namely, ____ [specify type in this class, e.g., helmets for dolls, miniature toy helmets]; consumer electronics and accessories therefor, namely, ____ [specify items in this class, e.g., rowing machines for exercise, video game machines]
International Class 41: Providing temporary use of online, non-downloadable video game software; computer programs and software, namely, ____ [specify format and type in this class, e.g., providing temporary use of online, non-downloadable video game software]
International Class 42: ____ [specify format in this class, e.g., providing temporary use of online, non-downloadable] computer programs and software for ____ [specify function and field, e.g., sharing videos online for entertainment]
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.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least ten classes; however, applicant submitted a fee(s) sufficient for only one class(es). 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response Information
Link to response form: Click to file a response to this nonfinal Office action
/April Roach/
April Roach
Examining Attorney
Law Office 115
571-272-1092
April.Roach@uspto.gov
RESPONSE GUIDANCE