To: | Kalypso Media Group GmbH (tmdocket@leasonellis.com) |
Subject: | U.S. Trademark Application Serial No. 88819109 - MATCHPOINT - 10859/ |
Sent: | May 28, 2020 02:08:04 PM |
Sent As: | ecom107@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88819109
Mark: MATCHPOINT
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Correspondence Address: ONE BARKER AVENUE, FIFTH FLOOR
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Applicant: Kalypso Media Group GmbH
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Reference/Docket No. 10859/
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: May 28, 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) Refusal
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
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.
Applicant’s mark is “MATCHPOINT”, and the relevant goods/services are:
“Computer software and computer programs for data processing, in particular software applications for smartphones and tablet computers”
“Entertainment; Arranging and conducting of sporting events”.
The mark in the cited registrations is the identical term “MATCHPOINT”, and the relevant goods/services are:
“Computer software for banking institutions used for reconciliation of invoices from currency transportation providers” (U.S. Reg. No. 3127379)
“Athletic facilities services in the nature of a fitness and tennis club in the nature of health club services, namely, providing professional tennis instruction and providing fitness and tennis training equipment in the field of physical exercise” (U.S. Reg. No. 4580704)
“Platform as a Service (PAAS) featuring computer software platforms for distributing content and creating OTT (over the top) and media subscription services, for use by content distributors, OTT service operators, web publishers, and OEMs; software as a service (SAAS) featuring computer software platforms for distributing content and creating (over the top) and media subscription services, for use by content distributors, OTT service operators, web publishers, and OEMs” (U.S. Reg. No. 5856459).
In the present case, Applicant’s mark is “MATCHPOINT” and the registrants’ mark is also “MATCHPOINT”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Turning to the comparison of the goods/services, a likelihood of confusion determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe the “Computer software and computer programs for data processing, in particular software applications for smartphones and tablet computers” and “Entertainment; Arranging and conducting of sporting events”, which presumably encompasses all goods and/or services of the type described, including the registrants’ more narrow types of software and sports services. 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). Thus, Applicant’s and Registrants’ goods/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/or 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 Registrants’ goods and/or services are related.
Lastly, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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).
Applicant should note the following additional ground for refusal.
Section 2(e)(1) Refusal
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
“Computer software and computer programs for data processing, in particular software applications for smartphones and tablet computers, computer game software, software for conducting of games; Downloadable electronic game programs; Electronic and machine- readable data carriers ”
“Games, including games for amusement arcades and electronic games and coin-operated games; Card games”
“Providing of online computer games and electronic publications; Games on the Internet; Providing information on-line relating to computer games and computer enhancements for games; Publication of printed matter, texts and online publications; Entertainment; Providing of non-downloadable online videos via the internet; Production and organisation of shows; Arranging and conducting of cultural and sporting events”.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In this case, the mark wording is a term of art that identifies a characteristic or feature of the specified goods/services, namely, that they involve or are for use with a particular “card game descended from whist”. (See attached entries from www.lexico.com, as well as attached web page screen captures in which the mark wording is used in a descriptive manner.)
Identification and Classification of Goods and Services
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
The following wording in the identification of goods and services is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification. Moreover, some of the wording is also too broad and could include goods/services classified in other international classes:
“Computer software and computer programs for data processing, in particular software applications for smartphones and tablet computers, computer game software, software for conducting of games; … Electronic and machine- readable data carriers”
“Games, including games for amusement arcades and electronic games and coin-operated games”
“… and electronic publications; Games on the Internet; … and online publications; … and photographic design, for others; … Entertainment; Providing of non-downloadable online videos and digital music via the internet; … and interpretation; Production and organisation of shows; … and sporting events”.
Applicant may amend the identification and classification to the following, if accurate. [Changes are noted in bold type and/or are underlined.]
“Downloadable data processing computer software and computer programs, in particular downloadable software applications for smartphones and tablet computers, all for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; Downloadable computer game software, Downloadable software for conducting of computer games; Downloadable electronic game programs; Electronic and machine- readable blank magnetic data carriers” [in International Class 009]
“Games in the nature of arcade games for amusement arcades, arcade-type electronic video games, and coin-operated video games; Card games” [in International Class 028]
“Providing of online computer games; Providing non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; Electronic games services provided by means of the Internet; Providing information on-line relating to computer games and computer enhancements for games; Publication of printed matter, texts and online {indicate nature of publications, e.g., manuals and magazines}; Photography and photographic composition, for others; Layout services, other than for advertising purposes; Production of animation, audio recordings, music and video recordings; Entertainment services, namely, providing an on-line board game; Providing of non-downloadable online videos in the field of {indicate field or subject matter of videos}; Providing of non-downloadable online pre-recorded digital music via the internet; Translation and language interpretation; Production of television shows; Organisation of shows for cultural purposes; Arranging and conducting of cultural events; Arranging and conducting of {specify type of sport, e.g., triathlon, cycling, running, etc.} events” [in International Class 041]
“Providing online non-downloadable data processing computer software applications for smartphones and tablet computers, all for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}” [in International Class 042].
TMEP §§1402.01 and 1402.03. [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]
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.
Combined Application 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(s) already paid (view the USPTO’s current fee schedule).
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Additional Information Required
(1) Explain whether the wording “MATCHPOINT” in the mark has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Respond to the following questions with a “Yes” or “No” answer:
- Do any of the identified goods or services involve bridge?
- Will any of the identified goods or services involve bridge?
- Are any of the identified goods or services for use in playing bridge?
- Will any of the identified goods or services be for use in playing bridge?
- Are any of the identified goods or services for use in scoring bridge?
- Will any of the identified goods or services be for use in scoring bridge?
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Requirements for Application Pursuant to Section 44
The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided. See 15 U.S.C. §1126(d), (e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
How to respond. Click to file a response to this nonfinal Office action.
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
571-272-9284
nelson.snyder@uspto.gov (Informal comms only
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