To: | MTONOMY, INC. (docket@techlawventures.com) |
Subject: | U.S. Trademark Application Serial No. 88681122 - MOLTEN - MTO-0003.TM |
Sent: | December 23, 2019 09:33:23 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88681122
Mark: MOLTEN
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Correspondence Address:
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Applicant: MTONOMY, INC.
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Reference/Docket No. MTO-0003.TM
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 23, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) 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
THIS REFUSAL IS LIMITED TO THE FOLLOWING GOODS/SERVICES: CONTENT DOWNLOADS.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4790145. 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/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.
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).
The applicant’s mark is MOLTEN. The registrant’s mark is MOLTEN. When each mark is considered as a whole, the marks are identical in sound, appearance and commercial impression.
The applicant’s goods services include the broadly identified entry “content downloads.” The registrant’s services are online computer and video games. Applicant’s goods are seen to encompass and include downloadable computer games and software. Therefore, as identified, the respective goods/services are seen to potentially include highly goods/services which move in the same or similar channels of trade such that consumer source confusion is likely to result.
In sum, the identicalness of the marks and the relatedness of the goods/services and their channels of trade are such that consumer confusion as to source is likely to result. Therefore, registration is refused under section 2(d) of the Trademark Act as to the specified goods/services only.
PLEASE NOTE: This refusal will be reconsidered upon applicant’s amended identification of goods/services which clearly distinguishes its goods/services and channels of trade from those of the registrant.
Notwithstanding the foregoing substantive refusal, the applicant must further respond to the following requirement.
IDENTIFICATION AND CLASSIFICATION OF GOODS/SERVICES
The identification of goods/services is indefinite and must be clarified because the goods and/or services are not identified with the requisite clarity and specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The goods and services are broadly identified to potentially include numerous goods or services. The wording content downloads is particularly broad and may encompass numerous more specific goods/services. Applicant should therefore identify any and all goods and/or services with specificity by common commercial name.
Additionally, the identification names goods and/or services which are either misclassified and/or capable of classification in multiple classes when properly identified. Though the identification is broad, the applicant may adopt, by way of suggestion, any or all of the following identification of goods/services, if accurate:
International Class 9; Downloadable computer programs for video and computer games; Downloadable image files containing {indicate content or subject matter}; Downloadable computer software for {specify function and field of use if field-specific}
International Class 35; Commercial administration of the licensing of the digital goods and services of others;
International Class 42; Providing electronic verification of on-line orders of digital content and generating electronic permission codes which then allow users to access said digital content;
International Class 45; Licensing of software for management of intellectual property; Licensing of intellectual property in the field of {specify field, e.g., trademarks, copyrights, etc.}.
The application references goods and/or services based on an intent to use in commerce in classes beyond those presently provided for; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b).
(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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 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).
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.
To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual is available for assistance with identifying and classifying goods and services. See TMEP §1402.04.
GENERAL INFORMATION
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.
Please feel free to contact the undersigned attorney if you wish to discuss this application.
/John S. Yard/
John S. Yard
Examining Attorney
Law Office 115
(571)272-9486
john.yard@uspto.gov
RESPONSE GUIDANCE