NOTE TO THE FILE
SERIAL NUMBER: 88731944
DATE: 03/24/2020
NAME: bgaynor
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
Good afternoon, Mr. Kojesta. Thank you for your email. The registration that I cited against your mark, U.S. Registration No. 1690329 for the mark GENESIS, is not just for gaming hardware. The registrant's goods also include "software for video output game machines." This is an old registration and, at that time, gaming software was classified in the same class as gaming machines. Also, the test is not whether the goods are identical but whether they are related. That means that even if the cited registration consisted solely of gaming hardware, your video and computer game software would still be related to those goods because the gaming machines need gaming software to run. With respect to amending the goods in your application, you can only limit the goods as explained in the letter that I sent to you - you cannot add or change the goods. The other relevant factor in the likelihood of confusion determination is that the two marks are identical in sound, appearance, and overall commercial impression. In situations where the marks are identical, as is the case here, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.
I cannot provide any legal advice to you about this application or your legal rights; I am pretty much limited to explaining the Office action and the application process. You should contact a private attorney who specializes in trademark or intellectual property law in order to get a better understanding of your options with respect to the refusal. I am sorry that I could not be more helpful.
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
-----Original Message-----
From: Peter Kojesta (Exis) <peter@exisinteractive.com>
Sent: Tuesday, March 24, 2020 10:49 AM
To: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Subject: U.S. Trademark Application Serial No. 88731944 - GENESIS - N/A
Hello Ms. Gaynor,
Office action:
http://tsdr.gov.uspto.report/documentviewer?caseId=sn88731944&docId=OOA202003211228
32#docIndex=0&page=1
I'm inquiring about the Office action for the trademark "Genesis - Serial No. 88731944 . You listed a likelihood of confusion with the SEGA mark. The Sega Genesis was a gaming console from the 90's, and our "Genesis"
project is a video game. One is hardware and the other is software. Given the rather large difference in the goods, Is there a better way I can present/modify this application that makes it more clear and is therefore acceptable? I'm not a lawyer so I'd greatly appreciate your guidance in this.
Peter Kojesta
P: 410-929-5054