To: | Gaming 247, Inc. (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88616873 - VENN - 134069-4001 |
Sent: | December 19, 2019 09:59:02 AM |
Sent As: | ecom104@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 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88616873
Mark: VENN
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Correspondence Address:
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Applicant: Gaming 247, Inc.
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Reference/Docket No. 134069-4001
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 19, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4536085. 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 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.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Here, applicant’s mark is VENN in standard character form, and registrant’s mark is VEN in standard character form.
In sum, given the highly similar appearance of the marks, VEN and VENN create a highly similar commercial impression and are therefore, confusingly similar and are likely to cause confusion under Section 2(d) of the Trademark Act.
COMPARISON OF THE SERVICES
Here, applicant has applied for the following services: “Providing temporary use of non-downloadable software for streaming video games to others; Platform as a service (PAAS) featuring computer software platforms for online, multiplayer and collaborative video gaming; Platform as a service (PAAS) featuring computer software platforms for video gaming and e-sports; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software for broadcasting, transmitting, receiving, accessing, viewing, uploading, downloading, sharing, integrating, displaying, formatting, organizing, storing, transferring and streaming of data, text, video game content, digital media, images, music, audio, video and animations, in the fields of video gaming and e-sports, competitions, current events, music events, concerts, news media and popular culture; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software for messaging, chat and social networking in the fields of video gaming, e-sports, competitions, current events, music events, concerts, news media and popular culture; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software for interactive streaming of live video gaming and e-sports competitions; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software to enable users to designate specific content for future viewing; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software for accessing, browsing and searching online databases; Providing temporary use of non-downloadable computer software for video gaming and e-sports purposes; Providing temporary use of non-downloadable video gaming and e-sports software; Hosting of third party digital content in the nature of videos, audio, music, text, data, images, software, applications, and other electronic works on the internet; Creating an on-line community for professional and recreational e-athletes for the purpose of connecting players, teams and leagues in the fields of video gaming and e-sports, and organizing video gaming and e-sports activities; Computer services, namely, providing an online community for computer users to participate in discussions, obtain feedback, form virtual communities, and engage in social networking in the fields of video gaming, e-sports, competitions, current events, music events, concerts, news media and popular culture; Software as a service (SAAS) featuring software that allows gamers to live broadcast their video games, watch video games being played by others or collaborate with others playing online video games; Software as a service (SAAS) services featuring software for displaying in-video game data and scores; Software as a service (SAAS) services featuring software for recording time in video games; Software as a service (SAAS) services featuring software for recording video game footage; Software as a service (SAAS) services featuring software for database management in the field of video gaming and e-sports.”
Registrant’s services are “Television broadcasting services; television transmission services; cable television broadcasting; radio broadcasting; broadcasting programming on the Internet; information transmission via electronic communications networks; transmission of information through video communications systems; communications services, namely, audio and video broadcasting; broadcasting services and provision of telecommunication access to video and audio content provided via a video on demand; streaming of audio material on the Internet; streaming of video material and podcasts on the Internet; wireless communications services, namely, transmission of text, graphics, data and entertainment information to mobile phones; mobile media and entertainment services in the nature of electronic transmission of entertainment media content,” and “Education and entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line computer service or by cable, satellite, television and radio; production of radio and television programs; live shows featuring football games, football exhibitions, football competitions, and musical and dance performances; organizing sporting and cultural activities; distribution of television programming to cable and satellite television systems; distribution of television programs for others.”
In support of this relatedness of the services, the following attached evidence shows that entities that provide registrant’s broadcasting and entertainment services commonly also provide software and online games with the same functions (for example, e.g., broadcasting and entertainment/sports content). Applicant has broad software functions in its identification.
http://help.nbc.com/hc/en-us/articles/360016954373-Download-the-NBC-App-for-your-device
http://disneynow.com/ and http://disneynow.com/all-games
http://www.espn.com/espn/apps/espn and http://www.espn.com/watch/
Therefore, applicant’s and registrant’s 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 Section 2(d) that 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). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Moreover, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Therefore, as the applicant’s mark is similar to the registrant’s mark, and as the services are related, there is a likelihood of confusion as to the source of the applicant’s goods and services and registration must be refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATIONS
Based upon this evidence, the trademark examining attorney is taking further action, as specified below. See TMEP §1715.02(b).
The filing dates of pending U.S. Application Serial Nos. 87847784, 79249573, 79249603, 88399558, 87472451 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may adopt the following identification, if accurate:
Class 42: Providing online temporary use of non-downloadable software for streaming video games to others; Platform as a service (PAAS) featuring computer software platforms for online, multiplayer and collaborative video gaming; Platform as a service (PAAS) featuring computer software platforms for {further clarify function} competing in video gaming and e-sports; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software, both for broadcasting, transmitting, receiving, accessing, viewing, uploading, downloading, sharing, integrating, displaying, formatting, organizing, storing, transferring and streaming of data, text, video game content, digital media, images, music, audio, video and animations, in the fields of video gaming and e-sports, {specify type} competitions, current events, music events, concerts, news media and popular culture; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software, both for messaging, chat and social networking in the fields of video gaming, e-sports, {specify type} competitions, current events, music events, concerts, news media and popular culture; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software, both for interactive streaming of live video gaming and e-sports competitions; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software, both to enable users to designate specific content for future viewing; Providing temporary use of online non-downloadable software and software as a service (SAAS) featuring software, both for accessing, browsing and searching online databases; Providing online temporary use of non-downloadable computer software for participating in video gaming and e-sports purposes; Providing online temporary use of non-downloadable video gaming and e-sports software; Hosting of third party digital content in the nature of videos, audio, music, text, data, images, software, applications, and other electronic works in the nature of {specify type} on the internet; Creating an on-line community for professional and recreational e-athletes for the purpose of connecting players, teams and leagues in the fields of video gaming and e-sports, and for the purpose of organizing video gaming and e-sports activities; Computer services, namely, providing an online community for computer users to participate in discussions, obtain feedback, form virtual communities, and engage in social networking in the fields of video gaming, e-sports, {specify type} competitions, current events, music events, concerts, news media and popular culture; Software as a service (SAAS) featuring software that allows gamers to live broadcast their video games, watch video games being played by others and collaborate with others playing online video games; Software as a service (SAAS) services featuring software for displaying in-video game data and scores; Software as a service (SAAS) services featuring software for recording time in video games; Software as a service (SAAS) services featuring software for recording video game footage; Software as a service (SAAS) services featuring software for database management in the field of video gaming and e-sports
Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted services may not later be reinserted. See 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.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
HOW TO CONTACT & ASSISTANCE
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.
/Tabitha Messick/
Tabitha L. Messick
Examining Attorney, Law Office 104
571-272-6585
tabitha.messick@uspto.gov
RESPONSE GUIDANCE