Offc Action Outgoing

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.  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:  February 26, 2020

 

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) Likelihood of Confusion Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 5686761.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

I.  2(d) Standard of Review

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

II.  Application of the 2(d) Standard of Review

 

The cited registration is the mark OATH and design for services including: “Education and entertainment services, namely, providing audio clips, video clips, musical performances, musical videos, film clips, photographs, and other multimedia materials in the field of education and entertainment via computer networks; Arranging, organizing, conducting, and hosting social entertainment events; Providing a website featuring non-downloadable videos in the field of news, entertainment, sports, technology, business, lifestyle, education, style, beauty, music, comedy, documentary, reality, lifestyles, finance, politics, popular culture, celebrities, travel, science, employment, and health; Providing information, news, and commentary in the fields of entertainment and education; Providing an internet news portal featuring links to news stories and articles in the field of current events; Providing an Internet sports news portal featuring links to sports news stories and articles in the field of sports; Entertainment services in the nature of fantasy sports contests and leagues”

 

The applied-for mark is OATH (stylized) for “Entertainment services, namely, providing online esports and video game information; entertainment services, namely, providing non-downloadable audio and video presentations in the field of video games; entertainment services, namely, providing online esports and video game competitions and tournaments”.

 

A.  Comparison of Sound, Appearance and Meaning

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

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/or 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)).

 

Here, the word portions of the marks at issue are identical – the term “OATH”. 

 

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).

 

Applicant’s mark OATH (stylized) is confusingly similar to the cited registered mark OATH and design because the marks share the term “OATH”, thus the pronunciation and overall meaning and commercial impression of the marks at issue is the same. 

 

The stylization of the applied-for mark consists of presenting the mark wording in a calligraphic font.  The design element of the cited registration consists of two vertically stacked dots that appear to be a colon punctuation mark.  In each case, the mark still appears to be the word “OATH” and no other meaning or connotation can be ascribed to either mark.  Thus, the minor differences in stylization and design of the marks at issue do not overcome the similarity of applicant’s and registrant’s marks.

 

B.  Comparison of Services

 

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 services identified in the cited registered mark include entertainment services providing entertainment, sports, technology, lifestyle, and pop culture video and multimedia materials, conducting entertainment events, providing entertainment news and information, providing an internet sports news portal, and entertainment fantasy sports contests and leagues.  Registrant’s sporting and entertainment services are worded broadly enough to encompass esports and competitive video gaming.

 

Applicant’s services are entertainment services including providing information, video presentations, and competitions and tournaments all in the field of “esports” and video games.  “Esports” are video game competitions (see the attached online article from http://en.wikipedia.org/wiki/Esports ).  “Esports” activities and competitions are considered entertainment and sporting activities, according to the attached Wikipedia.org article (id.) , the attached article from http://www.cnn.com/2018/08/27/us/esports-what-is-video-game-professional-league-madden-trnd/index.html , and the attached article regarding high school-level esports as a sport (see the article at http://www.google.com/search?biw=1194&bih=1697&tbm=nws&ei=NcZWXqn2MtOuytMP4K-AsAk&q=%22esports%22+and+sports&oq=%22esports%22+and+sports&gs_l=psy-ab.3..33i299k1l2.31773.32946.0.33193.11.10.0.0.0.0.160.1055.3j6.9.0....0...1c.1.64.psy-ab..2.9.1047...0.0.8rw1C11YUL0#spf=1582745176025 ).  Sporting news and entertainment content provider ESPN offers coverage of traditional sports events, esports, as well as fantasy-league sports (see the attached evidence from the website of http://www.espn.com/esports/ )

 

Consumers are likely to confuse the source of the services for the applied for mark and cited registration because the services of the applied for mark and the cited registration are at a minimum, related, and could be overlapping. 

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a sample number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case.  This evidence shows that the services listed therein, namely entertainment services in the fields of sports and esports, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Furthermore, as the services of the applied for mark and the cited registration are related and possibly overlapping, they may travel within the same channels of trade.

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). 

 

Here, not only are the services at issue closely related, the marks at issue are identical in meaning, commercial impression, and pronunciation, and are visually very similar, such that potential consumers would be likely to mistakenly believe applicant’s and registrant’s service share a unity of source.

 

C.  Summary of 2(d) review

 

The applied for mark is confusingly similar to the cited registered mark because the pronunciation and overall meaning and commercial impression of the marks at issue is the same.  Because the marks are confusingly similar and because the services are related and/or travel within the same channels of trade, the applicant’s mark is refused on grounds of likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 26, 2020 for

U.S. Trademark Application Serial No. 88699003

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 26, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”