eUnited States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88709524
Mark: EKEYS
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Correspondence Address:
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Applicant: Egift LTD
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Reference/Docket No. EKE-601
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 20, 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.
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.
Summary of Issues
· Section 2(d) refusal—likelihood of confusion with registered mark(s);
· Section 2(e)(1) refusal—mark is merely descriptive.
Section 2(d) Refusal – Likelihood of Confusion
The applicant seeks to register the mark EKEYS in standard characters for use with “Providing an interactive website featuring technology that enables users to purchase online gift cards, gift certificates, vouchers, and coupons for redemption with online retailers, digital audio and video content providers, software licensors, and providers of online video games.”
The registered mark is EKEY for “Computer hardware for storing, protecting, and accessing data and software for use in connection with gaming machines.”
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.
Comparison of 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).
In this instance, the mark shown in the application is EKEYS in standard characters. The mark shown in the registration is EKEY in typed format, which is equivement to standard characters. The marks are confusingly similar because the applied-for mark is simply the plural form of the registered mark. The marks are essentially identical in sound, meaning, appearance and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
Comparison of Goods and Services
In this case, the services listed in application are “Providing an interactive website featuring technology that enables users to purchase online gift cards, gift certificates, vouchers, and coupons for redemption with online retailers, digital audio and video content providers, software licensors, and providers of online video games.”
The goods in the registration are “Computer hardware for storing, protecting, and accessing data and software for use in connection with gaming machines.”
The registered mark is EKEY for “Computer hardware for storing, protecting, and accessing data and software for use in connection with gaming machines.”
The applicant’s services are closely related to the computer hardware for use with gaming machines listed in the registration because the applicant’s website provides gift cards, certificates, vouchers, and coupons that may be redeemed with video games played on the computer hardware listed in the registration. 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).
Conclusion
Because the compared marks are confusingly similar and the compared goods and services are related, it is likely that consumers would be confused as to the source of the goods and services should applicant’s mark be registered. Therefore, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Please note the following additional ground for refusal of registration.
Section 2(e)(1) Refusal—Mark Is Merely Descriptive
Applicant seeks to register EKEYS for “Providing an interactive website featuring technology that enables users to purchase online gift cards, gift certificates, vouchers, and coupons for redemption with online retailers, digital audio and video content providers, software licensors, and providers of online video games.”
The attached dictionary entry shows that the word “KEY” may be defined as “a means of gaining or preventing entrance, possession, or control.”
The attached evidence from the computer game field shows that a “game key” is defined as follows:
A game key is a serial number consisting of letters and numbers which can be used to activate a game. Activating a game key is possible on gaming platforms like Steam. A game key can only be exchanged for a game once, after which the game is assigned to your personal account. This ensures that you can download and play the game through your account even after you have deinstalled or deleted the game from your pc. Game keys are also known as game codes, activation codes or product codes.
http://www.dreamgame.com/game-key.
The applicant intends to provide a website where users can purchase vouchers, tokens and codes for accessing software programs and unlocking content within software programs, all of which are game keys. Thus, the wording “KEYS” merely describes the game key feature of applicant’s services.
In this case, the following evidence shows that the term “electronic” is commonly used to modify the word “key” in the context of computer games. Thus, the inclusion of the prefix “E” to the descriptive term “KEY” immediately conveys that the keys are electronic nature. See the following (emphasis added in all):
http://store.destructivecreations.pl/terms-and-conditions/ (“Please keep in mind that electronic game key transaction is not providing you a physical item such as box version of the game.”)
http://medium.com/@kericso/actually-the-computer-game-star-wars-has-come-up-with-a-way-to-provide-great-security-using-a-183ba66fdbd6 (“Also “World of Warcraft” has an electronic key.”);
http://www.mrllp.com/blog-Predetermined-Outcome-or-Not-a-Sweepstakes-or-Slot-Machine-is-Illegal-under-California-Law (“The Court held that regardless of the method of “revealing” the results, and irrespective of the “predetermined” result, such games were illegal under California law because they (1) constituted devices that reward purchasers of usable products (in this case, internet cafe time or phone cards) with sweepstakes or game points, and (2) allowed purchasers to redeem sweepstakes or game points by playing games that award cash or other prizes of value, where the device (3) standing alone or used with other electronic or mechanical components, (4) when operated by insertion of an electronic key, account number, magnetic card or by any other means, (5) awards cash or other valuable prices to users, and (6) does so by arranging or prearranging winning sweepstakes entries in a manner that is unpredictable — i.e., not known — to the customer or user.”)
In summary, the mark EKEYS is merely descriptive of electronic keys for games, which are a feature of applicant’ services. Registration on the Principal Register is accordingly refused pursuant to Section 2(e)(1) of the Trademark Act.
Supplemental Register Advisory for Intent-to-Use Application
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Response Guidelines
For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
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.
/April A. Hesik/
Examining Attorney
Law Office 124
(571) 272-4735
april.hesik@uspto.gov
RESPONSE GUIDANCE
