To: | Unburg LLC (corbin@unburg.com) |
Subject: | U.S. Trademark Application Serial No. 88535763 - CHIPSHOT - N/A |
Sent: | October 21, 2019 05:52:48 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88535763
Mark: CHIPSHOT
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Correspondence Address:
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Applicant: Unburg LLC
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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 21, 2019
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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).
In this instance, applicant’s mark CHIPSHOT creates the same commercial impression as registrant’s marks CHIP SHOT and CHIP SHOT and Design. Both applicant’s mark and the registered marks incorporate “chip” and “shot.” Applicant’s mark CHIPSHOT and the mark CHIP SHOT in Registration No. 5263424 are virtually identical in appearance and meaning, the only difference being the space between CHIP and SHOT in the registered mark, which does serve to change the overall impression of the marks or otherwise obviate their similarities. The design elements in Registration No. 5332515 likewise do not obviate the similarities between the marks; the background design does not create a different commercial impression, and the ball, cup, and bullseye design elements merely reinforce the meaning of “chip shot” in connection with a game. Finally, all of the marks are phonetic equivalents.
The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Therefore, the marks are confusingly similar, and consumers encountering the marks in the same commercial channels are likely to confuse the marks or at least mistake the underlying sources of closely-related goods and/or services provided under the marks.
Relatedness of the Goods and Services
Applicant seeks to register the mark CHIPSHOT in standard characters for “Backyard/Tailgate Golf Chipping Game” in Class 28.
Registration No. 5263424 is for the mark CHIP SHOT in standard characters, and Registration No. 5332515 is for the mark CHIP SHOT and Design, both for “Tabletop game in the nature of a drinking game consisting of a shuffle bag, playing balls, cups, and game chips containing pre-printed game commands sold as a unit” in Class 28.
Applicant’s goods and registrant’s goods are both games. Backyard and tailgate games, including golf chipping and golf-themed games, are often also marketed or advertised as drinking games, or have a drinking game play action involving balls and cups. For example, the attached articles from brobile.com and GolfDigest.com describe golf games with a “beer pong” or cornhole -style game play, incorporating drinking. As such, consumers are likely to believe that a tailgate or backyard golf chipping game and a drinking game using nearly identical marks are related or emanate from the same source.
Therefore, upon encountering CHIPSHOT used in connection with games, and CHIP SHOT and CHIP SHOT and Design used in connection with games, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source.
Thus, the mark is refused under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied to register the mark CHIPSHOT in connection with “Backyard/Tailgate Golf Chipping Game.” As shown in the attached dictionary entry from the Merriam-Webster Dictionary, a “chip shot” is “a short usually low approach shot in golf that lofts the ball to the green and allows it to roll.” As shown in the attached evidence from Liveabout.com and Golftec, “chip shot” is a commonly used term in the game of golf to describe this action.
Further, as shown in the attached evidence, “chip shot” is commonly used in connection with backyard, tailgate, and other action games to describe the golf-style chip shot action or maneuver. The review on TheGolfBallGuy states “The ‘Chippopotamuses’ at Chippo Golf have taken one of the most fun golf shots (the chip shot) and made it an amazing new backyard/tailgating game” (emphasis added). The screenshots from Addicted2DIY shows “how to make your own DIY chip shot golf game” (emphasis added). And the screenshot from Amazon.com for SPRAWL Golf Pong Set describes it as “Golf Practice Platform Exciting Beer Pong Game for Golf Enthusiasts and Beginners – Chip Shot Game for Beach Office Backyard” (emphasis added).
Applicant’s identification of goods specifically states that it is a “golf chipping game.” As such, “chip shot” directly describes a feature, purpose, or characteristic of applicant’s goods, specifically, that the game incorporates a chip shot.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, applicant’s mark CHIPSHOT retains the same descriptive meaning and impression of the phrase “chip shot.” Putting the two terms together does not create a unique or incongruous meaning in the context of the goods; instead, the direct descriptive meaning of “chip shot” is retained in CHIPSHOT.
In the context of the applied-for goods, the applied-for mark CHIPSHOT merely describes a a feature, purpose, or characteristic thereof. Therefore, registration is refused under Trademark Act Section 2(e)(1).
Advisory – Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant is advised that an amendment to the Supplemental Register would not obviate the refusal under Trademark Act Section 2(d) set forth above.
Applicant may substitute the following wording, if accurate:
Class 28: Action skill games, namely, a golf chipping game for play in the backyard and at tailgates
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 WISH TO HIRE TRADEMARK ATTORNEY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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
/Alina Morris/
Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-2256
alina.morris@uspto.gov
RESPONSE GUIDANCE