To: | Pog Unlimited (joan@rochmanslusser.com) |
Subject: | U.S. Trademark Application Serial No. 88773566 - POG - N/A |
Sent: | April 18, 2020 08:14:09 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88773566
Mark: POG
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Correspondence Address: |
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Applicant: Pog Unlimited
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Reference/Docket No. N/A
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: April 18, 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.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
- Section 2(d) Refusal – Likelihood of Confusion as to International Class 028
- Identification of Goods and Services
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register the mark:
POG (stylized) for, in relevant part, “Toys, games and sporting goods, namely board games incorporating milk caps, collector albums, game sheets and pads, and slammers sold as a unit; slammers and milk caps sold separately; trading cards, plush toys, action figures and accessories therefor.”
The registered marks are:
POG (stylized) (U.S. Registration No. 4463529) for “Entertainment services, namely, providing online video games and virtual reality games, providing temporary use of non-dowloadable electronic games and virtual reality games, providing a website featuring games and puzzles,” and
POG (U.S. Registration No. 5376165) for, in part, “Providing a computer game that may be accessed by users on a global network and the internet; providing interactive multi-player computer games via the internet and electronic communication networks; electronic game services and computer game competitions provided by means of the internet; electronic game services provided by means of the internet; providing non-downloadable digital music via the internet; providing non-downloadable digital music from the internet; providing non-downloadable digital music via internet websites for use with mp3 players; information relating to entertainment and education, provided on-line from a computer database and the internet; provision of information relating to entertainment online from a computer database of the internet.”
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.
In the instant case, the following factors are the most relevant: similarity of the marks, relatedness of the goods and services, and similarity of the trade channels of the goods and services.
Similarity 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).
The examining attorney acknowledges the stylization of the applied-for mark and the mark in U.S. Registration No. 4463529, however, 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)).
The marks, in the instant case, create the same mental reaction and overall commercial impression. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The Goods and Services
In the instant case the parties have highly related board games, trading cards, plush toys, and action figures and online video games and virtual reality games and interactive multi-player computer games such that the goods and services would be marketed in the same channels of trade.
GAMES RADAR - The best video game-themed board games you can buy
http://www.gamesradar.com/10-amazing-video-game-themed-board-games/
POGO – Monopoly Online; Risk
http://www.pogo.com/games/monopolyclassic?sl=2&gamekey=monopolyclassic
WIKIPEDIA – Video Games Based on Board Games
http://en.wikipedia.org/wiki/Category:Video_games_based_on_board_games
TOYWIZ – plush toys and action figures based on video games
http://toywiz.com/video-games/
Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The marks are highly similar. The applicant’s goods, namely, board games, trading cards, plush toys, and action figures are highly related to the registrant’s online video games and interactive multi-player computer games. The similarities among the marks and the goods and services are so great as to be marketed in the same channels of trade and create a likelihood of confusion among consumers.
Accordingly, registration is refused under Section 2(d) of the Trademark Act.
IDENTIFICATION OF GOODS AND SERVICES
Applicant must address the required clarifications and may adopt of the following identification formats, if accurate:
IC 016: Trading cards, other than for games
IC 028: Toys, games and sporting goods, namely board games featuring milk caps, collector albums, game sheets and pads, and slammers sold as a unit; Equipment sold as a unit for playing boarding games, namely, slammers and milk caps; Trading cards for games, plush toys, action figures and accessories therefor
IC 041: Entertainment services in the nature of an ongoing television series featuring animation; entertainment
services, namely, an ongoing series featuring animation provided through online streaming of audio, visual and audio-visual materials via a global computer
network, video on demand transmissions, service, webcasts via the Internet, and other
applications (specify manner provided, e.g., radio broadcasts, cable television)
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.
MULTIPLE CLASS REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
RESPONSE GUIDANCE