To: | Marvel Characters, Inc. (trademarks@disney.com) |
Subject: | U.S. Trademark Application Serial No. 88524715 - MARVEL LOKI - N/A |
Sent: | October 08, 2019 03:25:43 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88524715
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. 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
The registered mark is LOKI LOKI in standard characters for “All-purpose carrying bags; Animal carriers worn on the body; Backpacks; Backpacks for pets; Bags for sports; Clothing for domestic pets; Collars for animals; Collars for pets; Dog collars and leads; Handbags; Leads for animals; Leather leashes; Mountaineering sticks; Muzzles; Pet products in the nature of a restraining device, namely, tie-out stakes and tie-out chains; Travelling bags; Umbrellas; Walking sticks.”
The applied-for mark is MARVEL LOKI in standard characters for “ Toys, games and playthings; gymnastic and sporting articles (except clothing); hand-held units for playing electronic games for use with or without an external display screen or monitor; skins for covering and protecting apparatus; paper party favors; paper party hats; Christmas stockings; Christmas tree ornaments and decorations; snow globes.”
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).
Related Goods
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 goods include the broadly worded “gymnastic and sporting articles (except clothing),” which could encompass the more specifically identified sporting articles “bags for sports,” “mountaineering sticks,” and “walking sticks” in the registration. Broad wording in an application is presumed to encompass all goods of the type, including more specific goods in a registration. 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 and/or services 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 and/or services are related.
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 registration. Accordingly, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
2. Clarification of Identification and Classification of Goods and Services Required
A number of items in the identification require clarification. For example, the wording “games” is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording could identify recorded and downloadable game software in International Class 9, video game machines, board games, and other types of playable game goods in International Class 28, and provision of online, non-downloadable computer games, and live entertainment games in International Class 41.
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 9: Games, namely, ____ [specify type in this class, e.g., computer and video game cartridges, downloadable computer game software]; playthings, namely, ____ [specify type in this class, e.g., headsets for virtual reality games, recorded virtual reality game software]; sporting articles, except clothing, namely, ____ [specify items in this class, e.g., sports goggles, mouth guards for sports, sports whistles]; skins, namely, ____ [specify type in this class, e.g., fitted plastic films knowns as skins], for covering and protecting ____ [specify type of apparatus, e.g., portable music players and mobile telephones]
International Class 10: Toys, namely, ____ [specify type in this class, e.g., sex toys]; sporting articles, except clothing, namely, ____ [specify items in this class, e.g., heart rate monitors for sports]
International Class 13: Sporting articles, except clothing, namely, ____ [specify items in this class, e.g., sporting rifles]
International Class 18: Sporting articles, except clothing, namely, ____ [specify items in this class, e.g., all purpose sports bags];
International Class 21: Sporting articles, except clothing, namely, ____ [specify items in this class, e.g., sports bottles sold empty]
International Class 27: Gymnastic and sporting articles, except clothing, namely, ____ [specify items in this class, e.g., gymnastics mats
International Class 28: Toys, namely, ____ [specify type in this class, e.g.,
bath toys, musical toys, action figure toys]; games, namely, ____ [specify type in this class, e.g., video game consoles, board games];
playthings, namely, ____ [specify type in this class, e.g., play wands, cat toys, toy cars, target games]; gymnastic and
sporting articles, except clothing, namely, ____ [specify items in this class, e.g., gymnastic bars, beams and vaults, sport balls, golf clubs] (except clothing);
hand-held units for playing electronic games for use with or without an external display screen or monitor; skins, namely, ____ [specify type in this class, e.g.,
fitted plastic films knowns as skins], for covering and protecting ____ [specify type of apparatus, e.g., video game consoles and hand held video game units]; paper
party favors; paper party hats; Christmas stockings; Christmas tree ornaments and decorations; snow globes
International Class 41: Games, namely, ____ [specify type in this class, e.g., entertainment in the nature of football games, providing online computer games, providing live and online poker games]
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 eight 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