To: | Wolf Entertainment, Inc. (uspto@keatsgatien.com) |
Subject: | U.S. Trademark Application Serial No. 88594724 - WOLF - N/A |
Sent: | December 05, 2019 07:09:25 AM |
Sent As: | ecom110@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88594724
Mark: WOLF
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Correspondence Address: 120 S. EL CAMINO DRIVE, SUITE 207
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Applicant: Wolf Entertainment, Inc.
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Reference/Docket No. N/A
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 05, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
REFUSAL UNDER SECTION 2(d) OF THE TRADEMARK ACT- 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 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 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 MARKS
Applicant’s mark is WOLF in design form.
The mark in U.S. Registration No. 4760346 is WOLF in standard character form.
The mark in U.S. Registration No. 4760347 is WOLF II in standard character form.
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).
First, 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). In this case, the literal element in the applied-for mark is entirely comprised of the word “WOLF” and the mark in U.S. Registration No. 4760346 is entirely comprised of the word “WOLF”. Thus, the literal elements in the applied-for mark and the mark in U.S. Registration No. 4760346 are identical and create the same commercial impressions.
Second, the applied-for mark “WOLF” is identical in sound to the mark “WOLF” and nearly identical in sound to the mark “WOLF II”. 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).
Third, 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Similarly, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In this case, the applied-for mark contains a design element; however, it is the word portion of the mark (literal element) “WOLF” that consumers will use when requesting or recalling the applicant’s goods and “WOLF” is identical in appearance in sound to the mark “WOLF” in U.S. Registration No. 4760346 and nearly identical in appearance and sound to the mark “WOLF II” in U.S. Registration No. 4760347.
Lastly, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In this case, both cited registered marks are in standard character form, and thus the mark can be stylized in any fashion, which is likely to cause consumer confusion if the applicant’s and registrant’s marks are stylized in identical or similar fashions.
RELATEDNESS OF GOODS AND SERVICES
The applicant’s goods are “Video recordings featuring motion picture sound tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Audio and video recordings featuring motion picture sound tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring motion picture sound tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Digital media, namely, prerecorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting motion picture sound tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Downloadable video recordings; Downloadable sound recordings; Downloadable video recordings featuring motion picture sound tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Recorded video programs; Recorded software featuring film and television.”
The goods and services in U.S. Registration No. 4760346 are “Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games; providing online reviews of computer games, and providing of information relating to computer games; providing an internet website portal in the field of computer games and gaming; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.”
The goods and services in U.S. Registration No. 4760347 are “Entertainment services, namely, providing on-line computer games and game applications, enhancements within online computer games, and game applications within online computer games; providing online reviews of computer games, and providing of information relating to computer games; providing an internet website portal in the field of computer games and gaming; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.”
The goods and services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods and services in question are different from, and thus not related to, one another in kind, the same goods and services can be related in the mind of the consuming public as to the origin of the goods and services.”); TMEP §1207.01(a)(i).
The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The attached Internet evidence consists of excerpts from web sites. This evidence establishes that the same entity commonly manufactures/produces/provides the relevant goods and services and markets the goods and services under the same mark, the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and the goods and services are similar or complementary in terms of purpose or function.
Specifically, the attached evidence from the Wikipedia web site (“Category: Video games based on films” web page) shows a list of video games that are based on films. Similarly, the attached evidence from the Wikipedia web site (“Category: Films based on video games” web page) shows a list of movies based on video games. Also, the attached evidence from the Wikipedia web site (“Production company” web page) further explains that “[a]n entertainment project can either become a ‘one time hit’ or an ongoing ‘entertainment franchise’ that can be continued, remade, rebooted, or expanded into other sister industries; such as the video game industry (see Star Wars, Star Trek).” Next, the attached evidence from the Hollywood Reporter web site shows that Sony produced both films and video games. Lastly, the attached evidence from the Six Foot web site shows the same source produces both video games and films.
Therefore, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
In sum, the literal elements in the applicant’s mark and registrant’s marks are identical or nearly identical, and thus create the same commercial impression and the goods and services are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the goods and services originate from a common source. Therefore, registration must be refused under Section 2(d) of the Lanham Act.
RESPONSE OPTION
AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED
The wording in the identification of goods is indefinite and must be clarified for the reasons set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Generally, applicant must amend this wording 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.
Specifically, the wording “downloadable video recordings” and “downloadable sound recordings” is indefinite and the applicant must further specify the subject matter of the contents, such as “music,” as shown below.
Similarly, the wording “recorded video programs” is indefinite and the applicant must specify the subject matter of the videos, such as a “comedy-drama series,” as shown below.
Applicant may substitute the following wording, if accurate:
Class 09: Video recordings featuring motion picture sound tracks, motion picture films for education and
entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Audio and video recordings featuring motion picture sound
tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Digital media,
namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring motion picture sound
tracks, motion picture films for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Digital media,
namely, prerecorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting motion picture sound tracks, motion picture films for education and entertainment, and television
programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Downloadable video recordings featuring
music; Downloadable musical sound recordings; Downloadable video recordings featuring motion picture sound tracks, motion picture films
for education and entertainment, and television programs covering a wide variety of entertainment themes, namely, animation, comedy, drama, and variety; Recorded video programs featuring a comedy-drama series; Recorded computer software featuring
for accessing film and television programs.
SCOPE ADVISORY: Applicant’s goods 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 or add goods not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b).
The scope of the goods 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 goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
ASSISTANCE: For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”
RESPONSE GUIDELINES
If the applicant has any questions, please email or telephone the trademark examining attorney with the specific questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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. 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.
/Deborah L. Meiners/
Attorney Advisor
Law Office 110
(571) 272-8993
Deborah.Meiners@USPTO.gov
RESPONSE GUIDANCE