To: | Take-Two Interactive Software, Inc. (trademarks@kelleydrye.com) |
Subject: | U.S. Trademark Application Serial No. 88564555 - MAFIA - N/A |
Sent: | August 28, 2019 07:25:56 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88564555
Mark: MAFIA
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Correspondence Address:
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Applicant: Take-Two Interactive Software, 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: August 28, 2019
Introduction:
Likelihood of Confusion:
The applicant applied to register the mark: MAFIA for entertainment services, namely, providing online games, providing a website featuring computer games and video games, and news, information, tips, hints, contests, computer interface themes, enhancements, audio-visual content, music, films, videos, television programs, animated series, and other multimedia materials in the field of computer games and video games; providing information, news and commentary in the field of computer games and video games in Int. Class 41.
Similarities in Appearance, Sound, Connotation and Commercial Impression:
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.
MAFIA vs. MAFIA CITY and design
In this case, the following factors are the most relevant: similarity of the marks as to the word MAFIA, similarity and nature of the services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant features the mark “MAFIA” and the registrant(s) features the mark(s) “MAFIA CITY and design”. The marks in question both feature the same word MAFIA to identify the services. A consumer seeing these marks together or apart might believe that these video games are related. Both marks have the same commercial impression of the organized syndicate.
Services:
The applicant features for entertainment services, namely, providing online games, providing a website featuring computer games and video games, and news, information, tips, hints, contests, computer interface themes, enhancements, audio-visual content, music, films, videos, television programs, animated series, and other multimedia materials in the field of computer games and video games; providing information, news and commentary in the field of computer games and video games in Int. Class 41.
The registrant features ENTERTAINMENT SERVICES, NAMELY, PROVIDING AN ON-LINE COMPUTER GAME; PROVIDING ON-LINE ELECTRONIC PUBLICATIONS, NOT DOWNLOADABLE, NAMELY, PROVIDING ON-LINE ELECTRONIC BOOKS AND MAGAZINES IN THE FIELD OF GAMES; GAMING SERVICES PROVIDED ON-LINE FROM A COMPUTER NETWORK; GAMING SERVICES PROVIDED ON-LINE FROM A MOBILE PORT; LAYOUT SERVICES, OTHER THAN FOR ADVERTISING PURPOSES in Int. class 41.
Pending:
Information regarding pending Application Serial No. 88464027 is enclosed. The effective filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Other Informalities:
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Identification of Services:
Applicant may adopt the following identification, if accurate:
International Class 41:
Entertainment services, namely, providing online computer games, providing a website featuring information on computer games and video games, news, information, tips, hints, contests, computer interface themes, enhancements, gaming audio-visual content, music, films, videos, television programs, animated series, and other multimedia materials, namely, (list the exact nature of the services), all of the above in the field of computer games and video games; providing information, news and commentary in the field of computer games and video games.
For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Recitation and Identification Amendment Advisory:
Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification/recitation.
U.S. Attorney Bar Information:
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Questions:
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
Ayala, Lourdes
Lourdes Ayala, Attorney at Law
Law Office 106
Telephone Number 571-272-9316
Lourdes.Ayala@uspto.gov
RESPONSE GUIDANCE