United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88699003
Mark: OATH
|
|
Correspondence Address: TWO NORTH LASALLE STREET, SUITE 1700
|
|
Applicant: Oath Gaming LLC
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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
I. 2(d) Standard of Review
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”.
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 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.
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.
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.
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