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. 88588502
Mark: WAVES
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Correspondence Address:
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Applicant: Second to the Right LLC
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Reference/Docket No. 016170-0010
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 03, 2019
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
(PARTIAL)
REFUSAL PERTAINS TO CLASS 41 SERVICES ONLY
Applicant has requested registration for the mark "WAVES" for, inter alia, "Providing gaming/esports league formats and competitions; Entertainment services in the nature of video gaming lounge, virtual reality gaming arcade, gaming theater, and gaming and video gaming bar; Organizing and providing information relating to community gaming events; Arranging and providing facilities for esports training; Arranging and providing facilities, viewing screens and gaming consoles for esports contests, tournaments, leagues and events; Planning, organizing and conducting gaming, esports, tech camps for educational and training purposes; Planning, organizing, and conducting esports contests, tournaments, leagues and events; Providing a web-based system and on-line portal for customers to participate in community and on-line gaming; Operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Providing a website through which people locate information about tournaments, events, and competitions in the field of esports; Ticket reservation and booking services for recreational and leisure events, namely, esports contests, tournaments, and events; Officiating at esports contests, tournaments, and events; Providing information, news, and commentary in the field of current events relating to esports; Providing live stream technology equipment and operations per live events including esports, entertainment and segmented shows; Creating and supervising event production and in the fields of esports, entertainment and video games; Handling, managing, administrating and promoting live events for the purpose of broadcasting and recording; Creating an on-line community for the purpose of organizing esports contests, tournaments, and events" in Class 41.
Registrant's mark is "WAVE ESPORTS" for "Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring video games" in Class 41.
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.
In this case, the following factors are the most relevant: similarity of the marks, 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.
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 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).
Here, the applicant's standard character mark "WAVES" is confusingly similar to the registrant’s standard character mark “WAVE ESPORTS”.
The marks begin with the highly similarly, inherently distinctive wording, "WAVE" and its plural form “WAVES”, which is almost identical in appearance and sound, differing only by one letter “S”. The overall commercial impression is also the same, evoking reference to “A ridge or swell moving through or along the surface of a large body of water” or the act of “mov[ing] freely back and forth or up and down in the air, as branches in the wind”. See attached definition from Ahdictionary.com.
While applicant’s mark is a plural of the registered mark’s first term “WAVE”, this discrepancy is insufficient to overcome a finding of likely consumer confusion. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
The additional wording within the registered mark likewise does not obviate a finding of likely confusion. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The term “ESPORTS”, disclaimed for the registered services, has diminished capacity as an indicator of source as a result of its descriptive or generic nature. The term “WAVE” is thus rendered the most dominant portion of the mark in the minds of consumers when encountering the registrant’s marks, wording that is highly similar to the entirety of the applied-for mark.
For these reasons, when consumers encounter the parties' services using marks with these similarities, they are likely to be confused as to the source of the services. Therefore, the marks are confusingly similar.
COMPARISON OF THE SERVICES
In the present case, the applicant's video gaming events and information services are closely related to the registrant's non-downloadable video games.
For these reasons, consumers are likely to mistakenly conclude that the services emanate from the same source. Therefore, the services are closely related.
Because the marks are confusingly similar and the services are closely related, consumers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Trademark Act Section 2(d).
RESPONSE TO REFUSAL
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
REQUIREMENTS
If the applicant responds to the refusal, then the applicant must also respond to the below requirements.
IDENTIFICATION OF SERVICES AMENDMENT REQUIRED
Various wording within the identification of services in Class 41 is indefinite and must be clarified because it does not state the nature of the services with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id. For instance, applicant must clarify, using the common commercial or generic name for such services, the identifications of “Planning, organizing, and conducting…esports events” and “Organizing…tours” to clarify the nature and function of the services in Class 41.
Applicant may substitute the following wording, if accurate (suggested amendments featured in bold, underline, and strikethrough). Please note that if applicant wishes to adopt the suggested deletions, featured in strikethrough below, applicant MUST MANUALLY DELETE the struck through matter within electronic USPTO response forms. Copying and pasting the below language will NOT result in the deletion of the language from the identification.
Class 35: Promoting the live events, broadcasted and recorded, of others
Class 41: Entertainment services, namely, Providing organizing and conducting
electronic gaming/ and e-sports leagues formats and competitions;
Entertainment services in the nature of providing gaming facilities, namely, video gaming lounges, virtual reality gaming arcades, gaming theaters, and gaming and video gaming bars; Organizing and providing information relating to community gaming
events; Arranging and providing facilities for e-sports training; Arranging and providing facilities, viewing screens and gaming consoles for
participation in e-sports contests, tournaments, leagues and events, namely, _________ {identify events by common commercial or generic name, e.g., competitions, fairs, conventions, etc.}; Entertainment services, namely arranging for reservations and
rental of vieweing screens and gaming consoles for participation in e-sports contests, tournaments, leagues, competitions, fairs, and conventions; Planning, organizing and conducting gaming,
e-sports, and technology camps for educational and training purposes; Planning, organizing, and conducting
e-sports contests, tournaments, leagues and events, namely, _________ {identify events by common commercial or generic
name, e.g., competitions, fairs, conventions, etc.}; Providing a web-based system and on-line portal for customers to participate in community and on-line gaming; Operation and coordination of
game tournaments, leagues and tours of for recreational computer game playing purposes; Operation and coordination of guided tours of
__________ {identify location or what toured, e.g., video game conferences, e-sport competition facilities, etc.} for recreational computer game playing
purposes; Providing a website through which people locate information about tournaments, events, and competitions in the field of e-sports; Ticket reservation and
booking services for recreational and leisure events, namely, e-sports contests, tournaments, and events; Officiating at e-sports contests,
tournaments, and events; Providing information, news, and commentary in the field of current events relating to e-sports; Providing live stream technology equipment and
operations per live events including in the field of e-sports, entertainment and
segmented ________ {specify particular type of show by common commercial or generic name, e.g., game, comedy, e-sports competition, etc.} shows,
namely, ___________ {identify particular services by common commercial or generic name, e.g., providing facilities and equipment for producing e-sports tournaments, rental
of video game equipment, etc.}; Creating and supervising live event production and in the fields of e-sports, entertainment and video games, namely, ________ {specify particular type of event by common commercial or generic name,
e.g., video game tournaments, e-sport competitions, e-sport and video game fairs, etc.}; Handling Arranging, managing, and
administrating and promoting live broadcasted and recorded events, namely, __________ {specify
live events by common commercial or generic name, e.g., television shows, video gaming tournaments, e-sports competitions, etc.} for the
purpose of broadcasting and recording; Videography services, namely, recording live events; Creating an on-line community for the purpose of
organizing esports contests, tournaments, and events
Class 42: Creating an on-line community for the purpose of organizing e-sports contests, tournaments, and events
Class 43: [no amendment required]
SCOPE ADVISORY
Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only one class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
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.
Kathleen Schwarz
Kathleen H. Schwarz
/Kathleen H. Schwarz/
Examining Attorney
Law Office 123
571-272-2460
kathleen.schwarz@uspto.gov
RESPONSE GUIDANCE
