United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88747647
Mark: LIGHTNING
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Correspondence Address: |
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Applicant: Xiamen Leiting Interactive Network Co., ETC.
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Reference/Docket No. 7116-007tmus
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: March 26, 2020
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.
· Section 2(d) Refusal – Likelihood of Confusion
· Prior-filed Pending Applications
· Amendment of Identification of Goods and Services Required
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4384211 (LIGHTNING BOLT), 3921158 (LIGHTNING II), 5647174 (LIGHTNING X PRODUCTS), 4882586 (LIGHTNING LIGHTS), 2511170 (LIGHTNING RACER), 5310028 (LIGHTNING LABELS), 3706772 (LIGHTNING BOLT BOOKS), 5542146 (LIGHTNING MD), 2806765 (LIGHTNING JACK), 4389900 (LIGHTNINGSTREAM), 5031905 (LIGHTNING JAR), 3985394 (LIGHTNING DEALS), 4496118 (LIGHTNING LAUNCH), 5258559 (LIGHTNING), 5707929 (LIGHTNING ROULETTE), 4829110 (LIGHTNING CAST), 4802652 (LIGHTNING TECHNOLOGIES), 3773625 (LIGHTNING II), 3994359 (LIGHTNING), 4752656 (LIGHTNING BOLT 77), 5335715 (LIGHTNING LINES), 3141111 (LIGHTNING REACTION), 1793260 (LIGHTNING), 2730990 (LIGHTNING LEARNING), 3710830 (LIGHTNING PROCESS), 3772821 (LIGHTNING HOME ENTERTAINMENT), 3232870 (LIGHTNING ENTERTAINMENT), 3396491 (LIGHTNING RAY PICTURES), 3403232 (LIGHTNING SMART), 4652718 (THE LIGHTNING MACHINE), 6014547 (LIGHTNING WINGS), 4442562 (LIGHTNING RETURNS), 5826079 (LIGHTNING BOLT BOOKS), 3253904 (LIGHTNING BOX), 3948579 (LIGHTNING STACKED 7S), 5115176 (LIGHTNING MULTIPLIERS), 4717324 (LIGHTNING LINES), 5551767 (LIGHTNING ZAP), and 5898537 (LIGHTNING LINK). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The Applicant’s mark is LIGHTNING (+design) for "Downloadable computer application software for mobile phones, namely, software for computer games and electronic storage of data; Downloadable computer game software; Downloadable electronic publications in the nature of newsletters, magazine, manual or books in the field of game design and game playing; Electronic advertisement boards featuring a neon lamp; Electronic publications, namely, books, magazines, manuals, newsletters featuring software design, computer game software design, game design, game play recorded on computer media; Magnetic identifying cards; Mouse pads; Optical discs containing software and programming, used to set-up and calibrate televisions and video output devices; Recorded computer game software; Recorded computer operating software; Video disks and video tapes with recorded animated cartoons; Video game cartridges and discs", "Advertising posters; Business cards; Comic books; Educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, posters and educational booklets in the fields of software design, computer game software design, game design, game play; Newsletters about game design, computer game software design, game play, software design; Note cards; Paper shopping bags; Pictures; Post cards; Posters; Printed advertising boards of cardboard; Printed books in the field of game design, computer game software design, game play, software design; Printed publications, namely, brochures, booklets, and teaching materials in the field of software design, computer game software design, game design, and game play; Series of computer game hint books; Series of fiction works, namely, novels and books; Stationery", "Backpacks; Business card cases; Handbags; Key cases; Pocket wallets; Reusable shopping bags; School bags; Shopping bags with wheels attached; Travelling trunks; Umbrellas; Canes and walking sticks", "Beverage glassware; Bowls; Ceramic sculptures, vases, vessels, bowls, plates and pots; China ornaments; Compostable and biodegradable plates, bowls, cups and trays; Cooking pot sets; Cups; Earthenware jars; Enamelled glass, not for building; Glass jars; Glass mugs; Plates; Pots; Tea pots; Thermally insulated containers for food; Vacuum bottles", "Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Clothing layettes; Girdles; Gloves as clothing; Hats; Hosiery; Jackets; Neckties; Pants; Shawls; Shirts; Shoes; Tee shirts", "Apparatus for electronic games adapted for use with an external display screen or monitor; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Board games; Children's educational toys for developing fine motor, oral language, numbers, counting, colors and alphabet skills sold in a fabric bag which has a clear vinyl window for viewing small trinkets and toys securely contained within the bag itself; Christmas tree ornaments and decorations; Educational toys for teaching music principles to children, namely, hand-held music notation symbols and music related figures, such as individual hand-held piano keys; Electric action toys; Equipment sold as a unit for playing action type target games; Equipment sold as a unit for playing card games; Game apparatus, namely, bases, bats, and balls for playing baseball-like indoor and outdoor games; Game apparatus, namely, bases, bats, and balls for playing indoor and outdoor games; Game cards; Game controllers in the nature of keyboards for computer games; Gaming mice; Infant toys; Mechanical toys; Playing cards", "Accounting services; Advertising and publicity services; Employment agency services; On-line advertising on a computer network; Providing television home shopping services in the field of general consumer merchandise; Providing commercial information and advice for consumers in the choice of products and services; Rental of advertising time on communication media; Sales promotion for others; Sponsorship search; Systemization of information into computer databases", "Communications by fiber optic networks; Computer aided transmission of messages and images; Message sending and receiving services; Providing access to databases; Providing user access to global computer networks; Radio broadcasting; Rental of communication apparatus and implements; Rental of equipment for broadcasting; Rental of facsimile apparatus; Rental of telecommunication routers; Rental of telecommunications apparatus; Satellite transmission; Television broadcasting; Transmission of electronic mail", "Arranging and conducting educational conferences; Arranging and conducting educational congresses; Arranging, conducting and organization of seminars; Entertainment and educational services in the nature of on-line competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; Organization of exhibitions for cultural or educational purposes; Organization of electronic game competitions; Organization of sports competitions; Production of radio and television programmes; Publishing of electronic publications; Recreation information; Teaching and training in business, industry and information technology; Teaching in the field of music, reading, software design, game design, computer game software design, game play; Virtual reality game services provided on-line from a computer network; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members", "Computer programming and software design; Computer programming of computer games; Computer system design; Conversion of computer programs and data, other than physical conversion; Hosting the web sites of others on a computer server for a global computer network; Installation of computer software; Maintenance of computer software; Rental of computer software; Research and development of new products for others; Updating of computer software"
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF THE 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
As the first or only term in each mark, the common wording "LIGHTNING" is the dominant term in each mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Despite the fact that there are a number of cited marks with the wording "LIGHTNING", it is noted that, aside from the registered marks for "LIGHTNING" alone as referenced above, these cited marks each contain additional wording to distinguish the mark from the other cited marks for similar goods and services that also contain the wording "LIGHTNING". In this case, the applicant's mark does not contain any additional wording to distinguish it from the other cited marks featuring the wording "LIGHTNING". On the contrary, the entirety of the wording in the applicant's mark is encompassed by the marks in the cited registrations. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
In addition, the additional design of lightning in the applicant's mark only further bolsters the commercial impression of lightning created by the wording in the mark, and does not add anything to change the commercial impression of the mark and distinguish it from the other cited marks that also contain the wording "LIGHTING" as well as other matter. Although applicant’s mark does not contain the entirety of the registered marks, Applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registered marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from the registered marks may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains the common wording "LIGHTNING", does not add any wording that would distinguish it from the registered marks.
Moreover, in many cases, the additional wording in the registered marks is disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The common wording "LIGHTNING" remains the dominant feature of each mark.
Where the goods and services of an applicant and registrant are identical in part, as in these cases and discussed below, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
COMPARISON OF THE GOODS AND SERVICES
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). The compared goods and 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 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).
In this case, the goods and services in the application and registrations are identical in part. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods and services, e.g., backpacks, handbags, beverage glassware, hats, hosiery, jackets, pants, shirts, t-shirts, playing cards, apparatus for electronic games other than those adapted for use with an external display screen or monitor, recreation information, organization of sports competitions, virtual reality game services provided online from a computer network, computer programming, and updating of computer software. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrants’ goods and services are related.
In addition, the application uses broad wording to describe its downloadable computer game software, in International Class 009, which presumably encompasses all goods and services of the type described, including the registrants' narrower computer software platforms for games, and computer software for games of chance, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Moreover, the registrations use broad wording to describe its computer game software, electronic game programs, computer game software for gambling machines, gaming software that generates displays, and downloadable non-fiction e-books on a variety of topics, which presumably encompasses all goods and services of the type described, including the applicant's narrower downloadable computer game software, and downloadable electronic publications in the nature of books in the field of game design and game playing, respectively.
The registrations also use broad wording to describe its non-fiction books on a variety of topics, in International Class 016, which presumably encompasses all goods and services of the type described, including the applicant's narrower books in the fields of software design, computer game software design, game design, and game play, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
The application uses broad wording to describe its school bags, backpacks, and travelling trunks, in International Class 018, which presumably encompasses all goods and services of the type described, including the registrants' narrower backpacks, backpacks for holding survival gear and medical supplies, tactical backpacks, and rolling luggage for firefighter gear, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The registrations also use broad wording to describe its wallets, which presumably encompasses all goods and services of the type described, including the applicant's narrower pocket wallets.
The application uses broad wording to describe its beverage glassware and cups, in International Class 021, which presumably encompasses all goods and services of the type described, including the registrants' narrower tumblers and plastic cups, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The registrations also use broad wording to describe mugs, which presumably encompasses all goods and services of the type described, including the applicant's narrower glass mugs.
The registrations also use broad wording to describe its clothing goods, in International Class 025, which presumably encompasses all goods and services of the type described, including the applicant's business wear clothing. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
The application uses broad wording to describe its infant toys, mechanical toys, electric action toys, and apparatus for electronic games adapted for use with an external display screen or monitor, in International Class 028, which presumably encompasses all goods and services of the type described, including the registrants' narrower toy and model cars, and gaming machines with or without video output, and electronic game machines, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
The application uses broad wording to describe its advertising and publicity services, sales promotions for others, and providing commercial advice for consumers in the choice of products and services, in International Class 035, which presumably encompasses all goods and services of the type described, including the registrants' narrower advertising and marketing services provided by means of direct methods of marketing communications, dissemination of advertising for others via an on-line electronic communications network, promoting the goods and services of others through limited availability discount offers via an on-line electronic communications network, and marketing analysis services, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
The application uses broad wording to describe its providing access to databases services, and television and radio broadcasting, in International Class 038, which presumably encompasses all goods and services of the type described, including the registrants' narrower providing access to an electronic exchange of medical records, and broadcasting services for delivering audio and video content over the Internet, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The registrations also use broad wording to describe its electronic transmission of data in voice, video and audio format, which presumably encompasses all goods and services of the type described, including the applicant's narrower computer aided transmission of messages and images, and transmission of electronic mail, respectively.
The application uses broad wording to describe its arranging, conducting and organization of seminars and educational congresses, organization of exhibitions for cultural or educational purposes, organization of sports competitions, teaching in the field of music, reading, business, industry, and IT, production of radio and television programs, and recreation information, in International Class 041, which presumably encompasses all goods and services of the type described, including the registrants' narrower conducting seminars in lightning protection, learning and study strategies, training and providing seminars in reading and writing, health and lifestyle wellness, professional ice hockey exhibitions, production of films and television programs, computer education training, providing seminars on business strategies, providing information about community sporting and cultural activities, contests, and games, providing information in the field of recreation respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The registrations also use broad wording to describe its providing virtual environments in which users can interact for recreational, leisure or entertainment purposes, gaming services in the nature of online esports, providing online augmented reality games, and providing a computer game for use network-wide by network users, which presumably encompasses all goods and services of the type described, including the applicant's narrower virtual reality game services provided online.
The application uses broad wording to describe its computer programming and software design, computer programming of computer games, hosting the web sites of others, and development of new products for others, in International Class 042, which presumably encompasses all goods and services of the type described, including the registrants' narrower software development, programming, and implementation, and design, development, programming of computer software for games, providing a web hosting platform for users, and development of new technology for others in the field of protection against the effects of lightning and static electricity, respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The registrations also use broad wording to describe its product development for others and hosting services, which presumably encompasses all goods and services of the type described, including the applicant's narrower development of new products for others, and hosting the web sites of others, respectively.
Thus, applicant’s and registrant’s goods and services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and services are related.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In light of the similarities between the marks and the relatedness of the goods and services, it is likely that consumers who encounter the parties' goods and services will falsely conclude that they originate from the same source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
PRIOR-FILED PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of goods and services is unacceptable because it contains indefinite wording and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant has included the term “or” in the identification of goods in International Class 009. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear whether the applicant is using the mark on all of the goods, namely, "newsletters, magazine, manual, or books".
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may adopt the following identification, if accurate:
International Class 009: "Downloadable computer application software for mobile phones, namely, software for computer games and electronic storage of data; Downloadable computer game software;
Downloadable electronic publications in the nature of newsletters, magazine, manual and or books in the field of game design and game playing;
Electronic advertisement boards featuring a neon lamp; Electronic publications, namely, books, magazines, manuals, newsletters featuring software design, computer game software design, game design,
game play recorded on computer media; Magnetic identifying cards; Mouse pads; Optical discs containing software and programming, used to set-up and calibrate televisions and video output devices;
Recorded computer game software; Recorded computer operating software; Video disks and video tapes with recorded animated cartoons; Video game cartridges and discs"
International Class 016: "Advertising posters; Business cards; Comic books; Educational publications, namely, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, posters and educational booklets in the fields of software design, computer game software design, game design, game play; Newsletters about game design, computer game software design, game play, software design; Note cards; Paper shopping bags; Pictures; Post cards; Posters; Printed advertising boards of cardboard; Printed books in the field of game design, computer game software design, game play, software design; Printed publications, namely, brochures, booklets, and teaching materials in the field of software design, computer game software design, game design, and game play; Series of computer game hint books; Series of fiction works, namely, novels and books; Stationery" [no change required]
International Class 018: "Backpacks; Business card cases; Handbags; Key cases; Pocket wallets; Reusable shopping bags; School bags; Shopping bags with wheels attached; Travelling trunks; Umbrellas; Canes and walking sticks" [no change required]
International Class 021: "Beverage glassware; Bowls; Ceramic sculptures, vases, vessels, bowls, plates and pots; China ornaments; Compostable and biodegradable plates, bowls, cups and trays; Cooking pot sets; Cups; Earthenware jars; Enamelled glass, not for building; Glass jars; Glass mugs; Plates; Pots; Tea pots; Thermally insulated containers for food; Vacuum bottles" [no change required]
International Class 025: "Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Clothing layettes; Girdles; Gloves as clothing; Hats; Hosiery; Jackets; Neckties; Pants; Shawls; Shirts; Shoes; Tee shirts" [no change required]
International Class 028: "Apparatus for electronic games adapted for use with an external display screen or monitor; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Board games; Children's educational toys for developing fine motor, oral language, numbers, counting, colors and alphabet skills sold in a fabric bag which has a clear vinyl window for viewing small trinkets and toys securely contained within the bag itself; Christmas tree ornaments and decorations; Educational toys for teaching music principles to children, namely, hand-held music notation symbols and music related figures, such as individual hand-held piano keys; Electric action toys; Equipment sold as a unit for playing action type target games; Equipment sold as a unit for playing card games; Game apparatus, namely, bases, bats, and balls for playing baseball-like indoor and outdoor games; Game apparatus, namely, bases, bats, and balls for playing indoor and outdoor games; Game cards; Game controllers in the nature of keyboards for computer games; Gaming mice; Infant toys; Mechanical toys; Playing cards" [no change required]
International Class 035: "Accounting services; Advertising and publicity services; Employment agency services; On-line advertising on a computer network; Providing television home shopping services in the field of general consumer merchandise; Providing commercial information and advice for consumers in the choice of products and services; Rental of advertising time on communication media; Sales promotion for others; Sponsorship search; Systemization of information into computer databases" [no change required]
International Class 038: "Communications by fiber optic networks; Computer aided transmission of messages and images; Message sending and receiving services; Providing access to databases; Providing user access to global computer networks; Radio broadcasting; Rental of communication apparatus and implements; Rental of equipment for broadcasting; Rental of facsimile apparatus; Rental of telecommunication routers; Rental of telecommunications apparatus; Satellite transmission; Television broadcasting; Transmission of electronic mail" [no change required]
International Class 041: "Arranging and conducting educational conferences; Arranging and conducting educational congresses; Arranging, conducting and organization of seminars; Entertainment and educational services in the nature of on-line competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; Organization of exhibitions for cultural or educational purposes; Organization of electronic game competitions; Organization of sports competitions; Production of radio and television programmes; Publishing of electronic publications; Recreation information; Teaching and training in business, industry and information technology; Teaching in the field of music, reading, software design, game design, computer game software design, game play; Virtual reality game services provided on-line from a computer network; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members" [no change required]
International Class 042: "Computer programming and software design; Computer programming of computer games; Computer system design; Conversion of computer programs and data, other than physical conversion; Hosting the web sites of others on a computer server for a global computer network; Installation of computer software; Maintenance of computer software; Rental of computer software; Research and development of new products for others; Updating of computer software"
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Yi, Crystal
/Crystal H. Yi/
Examining Attorney
Law Office 123
571.270.0763
crystal.yi@uspto.gov
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