United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88550951
Mark: STAR QUEST
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Correspondence Address: BERG HILL GREENLEAF RUSCITTI LLP
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Applicant: Cosmic Games ULC
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Reference/Docket No. 80945.00040
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 30, 2019
Summary of Issues that Applicant Must Address
Refusal under Section 2(d) – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5677790. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant seeks to register the proposed mark STAR QUEST. The cited registration is for the mark STARQUEST. These marks are virtually identical. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Applicant seeks to register its mark for “Computer games; video games; computer software for video games and for video games machines; computer programs for creating video and computer games; video discs, hard discs, audio tapes, video cassettes, compact discs, all containing computer games; CD-ROMs containing computer games; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; computer games for use on mobile phones; electronic publications (downloadable), namely, newsletters, books, periodicals, all in the field of computer games and entertainment provided online from databases for the Internet; parts and fittings for all the aforesaid goods; downloadable computer games; downloadable video games.” Registrant’s services are “Entertainment services, namely, arranging and conducting of performing arts competitions for talent; Entertainment services in the nature of dance performances; Entertainment services, namely, organizing exhibitions for talent demonstration; Entertainment services, namely, organizing, arranging, and conducting talent competition events; Production and distribution of videos in the field of talent exhibition for entertainment purposes; Providing a website featuring news, photos, results and information about talent competitions for entertainment purposes; Providing an Internet website portal featuring entertainment news and information specifically in the field of performing arts competitions.” These goods and services are closely related because many entertainment shows also provide computer game based versions. Please see attached evidence illustrating many entertainment shows and the games based on them. Consumers are aware of the practice and may mistakenly believe that the goods and services originate from the same source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Identification of Goods
The identification of goods is indefinite and must be clarified because the applicant must specify that the software is recorded or downloaded to be maintained as goods in CLASS 9. 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.
The following substitute wording is suggested, if appropriate: (Note that proposed changes have been placed in bold type. Some items require applicant to include more complete information. These have been designated with braces{ } and/or bold type. The information in the braces is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):
· Downloadable computer game programs; Downloadable video game programs; Downloadable computer software for video games and for video games machines; Downloadable computer programs for creating video and computer games; Prerecorded video discs, hard discs, audio tapes, video cassettes, compact discs, all containing computer games; Prerecorded CD-ROMs containing computer games; Downloadable software for playing video, computer and on-line games; Downloadable software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; Downloadable computer games for use on mobile phones; Downloadable electronic publications, namely, newsletters, books, periodicals, all in the field of computer games and entertainment provided online from databases for the Internet, in INT. CLASS 9.
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).
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.
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
/Curtis W. French/
Curtis W. French
Trademark Examining Attorney
Law Office 115
571-272-9472
curtis.french@uspto.gov
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