To: | Miami Index Services Corporation (sgoldberglaw@verizon.net) |
Subject: | U.S. Trademark Application Serial No. 88566397 - WALLBALL - N/A |
Sent: | November 15, 2019 02:04:05 PM |
Sent As: | ecom125@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88566397
Mark: WALLBALL
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Correspondence Address: 225 LIBERTY STREET, SUITE 1020A
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Applicant: Miami Index Services Corporation
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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: November 15, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASS 25
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5822159. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 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. 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.
COMPARISON OF THE MARKS
The applied-for mark is WALLBALL in standard characters.
The registered mark is WALLBALL WORLD (Reg. No. 5822159) in standard characters.
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 case, the applied-for and registered marks each share the identical first wording “WALLBALL”. 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).
The additional wording “WORLD” in the registered mark does not obviate the similarity between it and the applied-for mark. 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.
As a result, the marks are confusingly similar and share the same overall commercial impression.
COMPARISON OF GOODS AND SERVICES
The applicant’s relevant goods are identified as “Clothing, namely, hosiery, footwear, shoes, sneakers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, sport shirts, rugby shirts, nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up tops/shooting shirts, jackets, wind resistant jackets, head bands, wrist bands, boxer shorts, caps, uniforms, swim wear, swim trunks, beach hats, sun visors” in Class 25.
The registrant’s relevant goods are identified as “Clothing, namely, t-shirts, shirts, shorts, hoodies, pants” in Class 25.
When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, that determination is based on the description of the goods and 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 applicant and registration have each identified identical goods. In particular, both the application and registration have identified among their goods t-shirts, shirts, shorts, and pants. In addition, the registrant’s broad identifications for shirts, pants, and shorts encompass the applicant’s narrower identifications for sweatshirts, sweatpants, tank tops, jersey, sport shirts, shooting shirts, rugby shirts, nightshirts, boxer shorts, and swim trunks. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 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 are related.
In summary, applicant’s and registrant’s marks create the same commercial impression and their respective goods are sufficiently related such that consumers are likely to be confused by the use of similar marks on or in connection with these goods. Accordingly, registration must be 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 – CLASS 41
In this case, applicant has applied for the mark WALLBALL in connection with its services identified as “Entertainment services, namely, organizing, producing and arranging sporting events, exhibitions, and tournaments in the field of stickball; providing web sites in the fields of sports information and entertainment information in the field of stickball; Providing web sites in the field of fan club services; production and distribution of television shows, radio shows and motion pictures, all in the field of sports and featuring sporting events in the nature of stickball games and stickball-related exhibitions; Entertainment and educational services in the nature of ongoing television and radio programs in the field of stickball and rendering live stickball games and basketball exhibitions; the production and distribution of radio and television shows featuring stickball games, stickball events and programs in the field of stickball; conducting and arranging stickball clinics and camps, coaches clinics and camps, entertainment services, namely, providing a website featuring multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings, all in the field of stickball; providing news and information in the field of stickball; providing an online computer database in the field of stickball; providing a web site featuring sports information, sports news, and sports league player statistics in the field of stickball” in Class 41.
The attached internet evidence from StreetPlay, Bleacher Report, and Sports Illustrated Vault shows that the wording “WALLBALL” in the applied-for mark has been commonly used as a synonym for or variation of the game of stickball identified in applicant’s identification of services for providing events, exhibitions, tournaments, television, radio, and motion pictures, camps, clinics, and information, all in the field of stickball. This evidence shows that “WALLBALL” is commonly used to refer to a type of stickball with fast pitching, as shown at:
Thus, the applied-for mark “WALLBALL” merely describes applicant’s Class 41 services as events, exhibitions, tournaments, television, radio, and motion pictures, camps, clinics, and information in the field of stickball as being about the game of “WALLBALL”, a particular variant of stickball.
As a result, registration must be refused under Section 2(e)(1) of the Trademark Act.
IDENTIFICATION OF GOODS AND SERVICES
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Class 25
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Class 41
Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font):
Class 25: Clothing, namely, hosiery, footwear, shoes, sneakers, Tshirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, sport shirts, rugby shirts, nightshirts, hats, caps being headwear, visors being headwear, warm-up suits, warm-up pants, warm-up tops in the nature of shooting shirts, jackets, wind resistant jackets, head bands, wrist bands, boxer shorts, uniforms, swim wear, swim trunks, beach hats, sun visors being headwear
Class 41: Entertainment services, namely, organizing, producing and arranging sporting events, exhibitions, and tournaments in the field of stickball; providing websites featuring sports and entertainment information in the field of stickball; providing websites featuring information in the field of fan club services; production and distribution of television shows, radio shows and motion pictures, all in the field of sports and featuring sporting events in the nature of stickball games and stickball related exhibitions; Entertainment and educational services in the nature of ongoing television and radio programs in the field of stickball and rendering live stickball games and stickball exhibitions; the production and distribution of radio and television shows featuring stickball games, stickball events and programs in the field of stickball; conducting and arranging stickball clinics and camps, coaches clinics and camps; entertainment services, namely, providing a website featuring multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings, all in the field of stickball; providing news and information in the field of stickball; providing an online computer database in the field of stickball; providing a web site featuring sports information, sports news, and sports league player statistics in the field of stickball
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 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
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE