United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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 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 17, 2019
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.
Introduction
This Office action is supplemental to and supersedes the previous Office action issued on 10/12/19 in
connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject
application. See TMEP §§706, 711.02. Specifically, a section 2(d) likelihood of
confusion refusal was inadvertently omitted from the first Office action.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated 10/12/19. The issue(s) raised in the previous 10/12/19 Office action is/are as follow and is/are maintained: identification of goods and services
requirement.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) refusal(s)
• Identification of Goods and Services requirement
Applicant must respond to all issues raised in this Office action and the previous 10/12/19 Office action, within six (6) months of the date of
issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within
this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of
confusion with the marks in U.S. Registration Nos. 4853070; 4815224; 4252394. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
§§1207.01 et seq. See the attached registrations.
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.
The applicant’s proposed mark is MINECRAFT EARTH. The
registrant’s marks are MINECRAFT; MINECRAFT and MINECRAFT REALMS. The marks all share the literal term MINECRAFT and are thus similar in sound, appearance and
commercial impression.
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.
Adding a term to a registered mark generally does not obviate the
similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola
Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB
1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
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 goods and/or services are compared to determine whether they are
similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71,
101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01,
1207.01(a)(vi).
The compared goods and/or services 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); TMEP §1207.01(a)(i). They need only
be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or 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 marks all include identical goods and services in Classes 9, and 42 in the field of computer games and computer game
services.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth
below.
Identification of Goods
Class 9
The wording “Computer software; downloadable and installable programs for playing
video games; computer programs for playing video games and social networking; computer programs for cellular phones for playing video games and social networking; game programs for cellular phones
for playing video games and social networking; downloadable maps featuring images of characters and scenes from a computer game” in the identification of goods is indefinite and must be clarified
because the computer software and programs must state recorded or downloadable as well as the function and field of use, and the nature of the “map” goods are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “(specify recorded or downloadable) computer software for (specify function and/or field of use); downloadable and (specify recorded or downloadable) installable computer
programs for playing video games; (specify recorded or downloadable) computer programs for playing video games and social networking; (specify recorded or downloadable) computer programs for cellular
phones for playing video games and social networking; (specify recorded or downloadable) computer game programs for cellular phones for playing video games and social networking; downloadable image
files of maps featuring images of characters and scenes from a computer game.”
Class 42
The wording “Providing non-downloadable images featuring images of characters and
scenes from a computer game; providing non-downloadable videos via communication by cellular phones; providing non-downloadable movies about social, entertainment, cultural and general interest;
providing non-downloadable music and video game sounds; providing non-downloadable online games; providing non-downloadable online electronic publications, namely, online journals, and interactive
online logs featuring user generated or specified contents” in the identification of services is indefinite and must be clarified because the mode of deliver and field of use must be stated for each
services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Providing temporary use of non-downloadable image files featuring images of characters and scenes from a computer game; providing a web site
featuring non-downloadable videos in the field of (specify subject matter) via communication by cellular phones; providing non-downloadable movies about social, entertainment, cultural and general
interest via a video-on-demand service; providing non-downloadable music and video game sound effects; providing non-downloadable online computer games; providing non-downloadable online electronic
publications, namely, online non-downloadable journals, and interactive online blogs featuring user generated or specified contents about (specify subject matter).
Applicant’s goods and/or 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 goods and/or 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 goods
and/or 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.
How to respond. Click to file a response to this nonfinal Office action
/Howard B. Levine/
Howard B. Levine
Examining Attorney
Law Office 115
571-272-9188
Howard.Levine@uspto.gov
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause
the application to abandon. A response or
notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA
maintenance or unforeseen circumstances could affect an applicant’s
ability to timely respond.
