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 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 15, 2019
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.
Introduction
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711,
718.03.
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. 4853070; 4815224; 4252394. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et
seq. See the attached registrations.
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.
The applicant’s proposed mark is MINECRAFT stylized. The registrant’s marks are MINECRAFT; MINECRAFT and MINECRAFT REALMS. The marks all share the literal term MINECRAFT and are thus similar in sound, appearance and commercial impression.
Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is
likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a
registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re
Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the
registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that 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).
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 generally will not avoid likelihood of confusion with a mark in
typed or standard characters 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”).
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).
The compared goods and/or 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).
The marks all include identical goods and services in Classes 9, 41 and 42.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth
below.
Identification of Goods and Services
Class 9
The identification of goods is indefinite and must be clarified because the software goods must specify the
mode of delivery and certain other goods must specify the common commercial name of field of use of the goods. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended
uses. See id.
Applicant may adopt the following wording, if accurate (deletions struck through, changes in italics): (specify recorded or downloadable) computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software
is content- or field-specific, the content or field of use} Computer software; (specify recorded or downloadable) computer and computer video
games software; interactive entertainment software, namely (specify recorded or downloadable) computer software for {specify the function of the
programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer software
downloaded or downloadable; Electronic publications, namely, {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter} recorded
on computer media; Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication} electronic
publications; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of computer
software computer software publications downloaded; prerecorded magnetic data carriers featuring {indicate subject matter} data recorded electronically from
the Internet; prerecorded magnetic data carriers featuring machine readable {indicate subject matter} data recorded in machine readable form from the Internet; prerecorded discs, tapes, cartridges, CD-ROMs, DVDs and other magnetic, electronic or optical media, all bearing computer games, computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field
of use} and/or audio visual content, namely (specify e.g. motion picture films about {indicate subject matter}); (specify recorded or downloadable) computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs,
e.g., use in database management, use in electronic storage of data, etc.} software applications; (specify recorded or downloadable) computer
website application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database
management, use in electronic storage of data, etc.} website applications; digital (specify recorded or downloadable) computer games; computer peripherals; prerecorded optical discs featuring (specify content or subject matter) and optically recorded data for computers; (specify recorded or downloadable)
computer software and hardware apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading,
storing and organizing audiovisual, videographic and written data; (specify recorded or downloadable) computer software for gathering, processing, monitoring, analysing,
managing and/or reporting information; (specify recorded or downloadable) computer software for gathering, processing, monitoring, analysing, managing and/or reporting
information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; (specify recorded or
downloadable) computer software for gathering, processing, analysing, managing and reporting information concerning online, Internet and web site activity; (specify recorded or
downloadable) computer software for data mining, data query, data processing and data analysis; (specify recorded or downloadable) computer software for designing,
developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetisation and
operation of the foregoing; electronic, magnetic and optical discs featuring information in the field of (specify) information stored on electronic, magnetic and/or by
optical means; downloadable electronic publications in electronic form in the nature of {indicate specific nature of
publication} in the field of {indicate subject matter of publication} supplied on-line from a database or from facilities provided on the Internet or other networks and
websites (including websites); electronic notice boards; online database; sound and video recordings featuring {specify subject matter, e.g., music,
self-improvement, mathematics instruction}; prerecorded magnetic data carriers featuring {indicate subject matter} sound, video and data
recordings; sunglasses; blank and prerecorded phonograph records discs, tapes, cassettes, cartridges, magnetic cards and
(specify all other carriers by exact name) bearing or for use in bearing sound recordings, video recordings, data, images, games, graphics, text, programs
or information in the field of (specify e.g. music, computer games, motion pictures); memory cards carriers; digital media,
namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting {indicate subject matter} pre-recorded video, audio and data recording media; blank (specify optical, digital) data carriers; telephones, communications and telecommunications apparatus, namely (specify e.g. cellphones); downloadable computer game software for use on mobile and cellular phones mobile telephone games; mobile telephone fascias and covers; non-printed downloadable (or specify recorded on computer media) publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of
publication}; motion picture films about (specify subject matter) and downloadable films and television programs featuring {indicate subject matter}
provided via a video-on-demand service and programmes prepared for television; refrigerator magnets; instructional and teaching materials in the form of apparatus and instruments, namely (specify e.g. electronic sports training simulators); (specify other goods by exact name and/or field of use) parts and fittings for the aforesaid
goods in Class 9; providing an on-line computer database in the field of {indicate specific service-related field}computer game software development in Class 42.
Class 41
In Class 41, the applicant has included the term “and/or” or “or” in the identification of goods
and/or services. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the
mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.
See TMEP §1402.03(a). In this case, it is unclear whether applicant is using the mark, or intends to use the mark.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona
fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or
“or” deleted and the goods or services specified using definite and unambiguous language.
Certain wording in the identification of services is indefinite and must be clarified because some services
are misclassified or duplicative. Also, certain language does not specify the common commercial name of the services or must indicate the field of use for the
services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate (deletions
struck through, changes in italics): prerecorded DVDs featuring television programs about (specify e.g. computer
games) in Class 9; board games in Class 28; arranging, organizing and conducting conferences and seminars for business promotional purposes in Class
35; entertainment and education services, in the form of online electronic, computer and video games provided by means of the Internet, mobile telecommunications and other
remote communications devices; Internet providing in-line non-downloadable computer games (non downloadable); organising
organization of games; games (not downloadable) providing temporary use of non-downloadable computer games played via a global computer network;
providing interactive and/or educational entertainment services, namely (specify); education and entertainment services provided by computer networks, television, mobile
telephone, cable and other electronic means, namely (specify); presentation, preparation, editing and production of cinematographic, televisual, digital and motion
picture films, radio and television programs; motion picture theaters; entertainment services, namely, the provision of continuing {indicate form of the
entertainment, e.g., programs, segments, movies, shows} featuring {indicate type e.g., news, comedy, commentary, etc.} delivered by {indicate form of broadcast medium, e.g., television, radio,
satellite, the internet, etc.}; multimedia publishing of computer and video games and computer and video games software; provision of customised web pages for
featuring computer game player information, including information regarding a player's identity and the player's preferences, all for entertainment
purposes; multimedia publishing of entertainment and/or educational software; arranging, organizing and conducting conferences and seminars for promotional
purposes; entertainment services in the form of television programs programmes, radio, cable, satellite and Internet programs programmes
featuring {indicate type e.g., news, comedy, commentary, etc.}; production of television programs, shows, films, and videos; educational and entertainment
services, namely, a continuing program about {indicate subject matter} accessible by radio, television, satellite, audio, video and computer networks production and presentation of television
programmes, shows, films, videos and DVDs; games, online games, educational services relating to entertainment, namely (specify e.g. conducting seminars in the
field of computer games); information relating to entertainment or and education, provided on-line from a computer database or the Internet or by communications
satellite, microwave or other electronic, digital or analogue media; digital video, audio, and multimedia publishing services; electronic publishing services,
namely, publication of text and graphic works of others on {indicate format, e.g., CD, DVD, on-line} featuring {indicate specific subject matter} publishing; organisation, production and
presentation conducting of events (specify e.g. computer game competitions) for educational, cultural or entertainment purposes;
organisation, production and presentation conducting of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged
events, and live performances and participation events, namely (specify e.g. computer game tournaments); entertainment services, namely, production and distribution of a game show Internet based games; booking of tickets for entertainment events; information and advisory services
relating to any of the aforesaid services; advisory and consultancy services in connection with the foregoing in Class 41.
Class 42
Certain wording in the identification of services is indefinite and must be clarified because it
must specify the common commercial name for the services or the field of use for the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate (deletions struck through, changes in italics): Computer services, namely (specify e.g. namely, hosting and maintaining an on-line web site for others for {indicate function or purpose of web site};
software development, design, maintenance, programming, engineering, research and writing services; advisory and consultancy services relating to computer software design and
computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance, consultancy, programming,
engineering, research and writing; computer and video games development; creation of computer graphics; computer game design; design and development services in relation to computer and video games
and interactive entertainment products; design services relating to the production of computer and video games and interactive entertainment products; social network software and
virtual worlds software development, and web site hosting for others and management; providing a web site that features technology services for gathering,
processing, monitoring, analysing, managing and/or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and computer
based audio visual content; computer services providing a web site that features technology for gathering, processing, analysing, managing and reporting information
concerning online, Internet and web site activity; computer services for data mining and analyzing data in the field of (specify e.g. online computer usage volume) and data
analysis; services for designing, developing, modifying and improving computer software, applications, computer and video games, websites of others and audio visual
web site content of others; computer software development services in the field of (specify); computer software development services
development of computer software that performs the above functions to others; software development, design, maintenance; software programming, engineering, research and
writing in the field of computer and video games; advisory and consultancy services relating to the design of computer and video games software; collection, analysis and
reporting of computer data concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; providing temporary use of on-line non-downloadable software development tools for {specify the function of the programs, e.g., for use in database management,
for use as a spreadsheet, etc. and if content- or field-specific, the field of use} computerized data management service; technical technological information,
advisory and consultancy services relating to use of computer software applications, computer and video games video, games, websites of others and web site audio visual content of others;
advisory and consultancy services relating to the foregoing.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond
those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not
substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is
generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any
acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP
§1402.07(e).
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.
Multiple Class Requirements
The application identifies goods and/or services in more than one international class;
therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(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 4 classes; however, applicant submitted a fee(s) sufficient for only 3 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the
Trademark Electronic Application System (TEAS) form.
How to respond. Click to file a response to this nonfinal Office action
/Howard B. Levine/
Howard B. Levine
Examining Attorney
Law Office 115
571-272-9188
Howard.Levine@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.
