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. 88531358
Mark: DISCORD
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Correspondence Address: 650 Town Center Drive, Suite 2000
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Applicant: Discord Inc.
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Reference/Docket No. 062195-4-US
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 11, 2020
This action responds to the Applicant’s letter dated February 21, 2020 in which the applicant 1) argued against the likelihood of confusion refusal issued by the examiner on August 21, 2019; 2) submitted substitute specimens for International Classes 9 and 45; and 3) claimed ownership of Registration Number 4930980. After careful consideration of both the facts and the law, the examining attorney has found the applicant’s likelihood of confusion arguments to be unpersuasive for the reasons listed below. The refusal under section 2(d) is thus continued and made FINAL.
Please note that the substitute specimens, as well as the claim of ownership of Registration Number 4930980 are acceptable as submitted.
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal - Final
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5008676 and 5532472. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Comparison 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 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 “DISCORD” is highly similar to the registered marks “DAYS OF DISCORD” and “LEGACY OF DISCORD”. As previously note, the only difference between the marks is that the applicant deleted the wording “DAYS OF” and “LEGACY OF” from the registered marks. In this case, the entirety of the applicant’s mark appears within the cited registrations. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
As previously noted, the applicant’s mark could reasonably be perceived as designating one computer game in a series of DISCORD computer games, all from the same source. It is common for computer game software manufacturers to use a common trademark in a family of marks. As such, consumers are accustomed to seeing computer game software manufacturers use one common mark in connection with a family of marks with variant terms. For example, Activision Publishing owns registrations for CALL OF DUTY (RNs 2925780, 4035859 and 5745891); CALL OF DUTY BLACK OPS (RN 4029838); CALL OF DUTY MW3 (4162286); CALL OF DUTY ADVANCED WARFARE (RN 4597397); CALL OF DUTY GHOSTS (4766061); and CALL OF DUTY INFINITE WARFARE (RN 5541484), in pertinent-part for computer game software. Additionally, Take-Two Interactive Software owns registrations for “GRAND THEFT AUTO” (RN 2148765 and 4510940); GRAND THEFT AUTO III (RN 2755932); GRAND THEFT AUTO VICE CITY (2909548); GRAND THEFT AUTO IV: THE LOST AND DAMNED (RN 3676467); GRAND THEFT AUTO CHINATOWN WARS (RN 3926016); GRAND THEFT AUTO IV (RN 3646128); GRAND THEFT AUTO: SAN ANDREAS (RN 2993273); and GRAND THEFT AUTO V FIVE (RN 474389), all in pertinent-part for video game software. King.com owns registrations for CANDY CRUSH (RN 5440808); CANDY CRUSH SAGA (RN 4541423); CANDY CRUSH JELLY (RN 4996376); CANDY CRUSH CARAMEL (RN 4997519); CANDY CRUSH SODA (RN 5736686); CANDY CRUSH SODA SAGA (RN 5766531); CANDY CRUSH FRIENDS SAGA (RN 5888381) and CANDY CRUSH FRIENDS (RN 5894383); all of the foregoing in pertinent-part for computer game software. Finally, Nintendo of America owns registrations for POKEMON and POKÉMON (RN 2297050 and 2514998); MY POKÉMON RANCH (RN 3720919); POKÉMON HEARTGOLD (RN 3851691); POKÉMON SOULSILVER (RN 3851699); POKÉMON RUMBLE (RN 3887585); POKÉMON X (RN 4512042); POKÉMON Y (RN 4512043); POKÉMON RANGER (RN 3897482); POKÉMON BATTLE TROZEI (RN 4661014); POKÉMON OMEGA RUBY (RN 4791601); POKÉMON ALPHA SAPPHIRE (RN 4791602); POKÉMON SHUFFLE (RN 5138061); POKÉMON SUN (RN 5214913); POKÉMON MOON (RN 5214916); POKÉMON GO (RN 5646122); POKÉMON DUEL (RN 5490041); POKÉMON ULTRA MOON (RN 5740416); and POKÉMON QUEST (RN 5886386); all of the foregoing in pertinent-part for computer game software. Please see the attached registrations as evidence.
The applicant argues that the applicant’s mark is “visually and aurally distinct” from the cited registrations and presents a distinct commercial impression. The examining attorney respectfully disagrees with this position, because, as noted above, computer game software manufacturers often use one common term in a family of marks, to branch out and create a series of computer games with an underlying theme and characters. It is important to note that both of the cited registrations reference the term DISCORD in a way that would indicate to consumers that all of the DISCORD marks emanate from a single source.
The applicant also contends that there are different channels of trade and conditions which purchases are made. In order to support this position, the applicant submitted screenshots of how consumers must download software and possibly pay subscription fees. The examining attorney respectfully disagrees with this because determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
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.
However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration is not for the same goods and has not co-existed for at least five years with the cited registrations. Thus applicant’s prior registration does not obviate the Section 2(d) refusal.
The applicant also stated that the Applicant is not aware of any instances of actual consumer confusion with the cited marks. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
The applicant submitted five registrations, two of which are third-party registrations, one that is owned by the applicant, and the remaining two for the cited registrations. All five of the registrations contain the word “DISCORD” and all list goods in International Class 9. The applicant argues that this demonstrates that all of these marks have co-existed on the Federal Register for many years. The examining attorney respectfully disagrees because these registrations (RNs 4930980, 4726974 and 3849790) appear to be for goods that are predominantly different from or unrelated to those identified in applicant’s application. As such, these registrations are entitled to little weight in determining the strength of a mark or the fact that they have co-existed. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). Please see the attached registrations as evidence.
As noted below, the applicant’s and registrant’s identification of goods are identical. Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Comparison of the Goods - Class 9 - Only
Please note that the applicant did not present an argument regarding the comparison of the goods.
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 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 and/or services are related.
Purchasers of applicant’s goods could mistakenly assume such goods were produced by registrant, or that applicant and registrant are related in some way. Accordingly, since the marks are confusingly similar and the goods are closely related, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Trademark Act.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Proper Response to Final Office Action – Partial Refusal
In such case, the application will proceed for the following class only: Class 45.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/David Collier/
Examining Attorney
Law Office 109
(571) 272-8859
david.collier@uspto.gov (not for formal responses)
RESPONSE GUIDANCE
