To: | Kabushiki Kaisha BANDAI NAMCO Entertainm ETC. (nptm@nixonpeabody.com) |
Subject: | U.S. Trademark Application Serial No. 88888819 - TALES OF ARISE - 52999-100619 |
Sent: | March 10, 2022 11:36:56 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88888819
Mark: TALES OF ARISE
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Correspondence Address:
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Applicant: Kabushiki Kaisha BANDAI NAMCO Entertainm ETC.
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Reference/Docket No. 52999-100619
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 10, 2022
On August 26, 2020, action on this application was suspended pending the disposition of U.S. Application Serial No. 88457468. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SUMMARY OF ISSUES
· Section 2(d) Refusal– Likelihood of Confusion
SECTION 2(D) REFUSAL: LIKELIHOOD OF CONFUSION
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 seeks registration of the mark, “TALES OF ARISE” and design in special form for “Downloadable computer game software; Downloadable computer game programs; Downloadable computer game software via a global computer network and wireless devices; Downloadable video game software” in International Class 9; and “Entertainment services, namely, providing online video games; Entertainment services, namely, providing a computer game that may be accessed network-wide by network users via mobile phones, mobile devices and computers; Providing online computer games via network between communications networks and computers,” in International Class 41.
Similarly, registrant owns a registration for the mark, “ARISE A SIMPLE STORY” (US Reg. 6176127) and design in special form for “Cases for mobile phones; Cinematographic films featuring computer games; Computer game cartridges; Computer game discs; Computer peripheral devices; Digital music downloadable from the Internet; Downloadable computer application software for mobile phones, namely, software for computer games; Downloadable computer game instruction manuals; Downloadable computer game software; Downloadable computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images, and moving pictures; Downloadable electronic game programs; Downloadable electronic game software; Downloadable electronic game software for use on mobile and cellular phones and handheld computers; Downloadable interactive game programs; Downloadable interactive multimedia computer game programs; Downloadable multimedia file containing artwork, text, audio, video, games, and Internet Web links relating to interactive, video, electronic and mobile games; Downloadable music files; Downloadable video game programs; Downloadable video game software; Electronic personal organizer; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones; Graphics cards; Headsets for use with computers; Mobile phone straps; Mouse pads; Recorded computer application software for mobile phones, namely, software for computer games; Recorded computer game software; Recorded video game software; Recorded video game programs,” in International Class 9; and “Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing online electronic games; Entertainment services, namely, providing online video games; Entertainment services, namely, providing temporary use of non-downloadable computer games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing temporary use of non-downloadable video games; Entertainment in the nature of computer games tournaments; Providing information on-line relating to computer games and computer enhancements for games; Providing an Internet website portal featuring entertainment news and information specifically in the field of interactive, computer, video, electronic games, gaming and social networking,” in International Class 41.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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).
In this case, applicant’s mark, “TALES OF ARISE” with design, is confusingly similar to registrant’s mark, “ARISE A SIMPLE STORY” with design, in appearance, sound, and commercial impression, because they share the identical dominant term, ARISE. Accordingly, because of this shared term, the marks convey the same commercial impression.
As a rule, 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In this instance, the wording ARISE is the more significant portion of the marks in the application and the registration. In the application, the wording, ARISE, is set apart from the other words in that it appears in all capital letters with additional stylization of the letter, “A” in the form of angled line cutting through the letter, “A”. Likewise, in the registration, the wording, ARISE is further set apart from its surrounding literal elements in that the wording ARISE appears in the top center position, in larger font, and all capital letters.
Although there is no mechanical test to determine the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if suggestive, rather than a generic or descriptive term as the source-identifying feature of the mark. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)).
Regarding the use of additional wording, “TALES OF” in the application and “A SIMPLE STORY” in the registration, this mere addition does not diminish the similarity of the marks. As discussed above, generally, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, common use of the dominant term, ARISE renders the marks in the application and registration mark similar. Notably, as discussed above, the wording, ARISE appears in much larger capital letters than the wording, A SIMPLE STORY, implying that ARISE is the more dominant and primary title. Similarly, ARISE appears in the application in capital letters larger than the wording, “TALES of”. The appearance and placement of the word, ARISE indicates that ARISE is more significant than the less dominant subtitle, A SIMPLE STORY and less dominant wording, “TALES of”. Thus, the usage of ARISE in both marks results in a very similar overall appearance, sound, and connotation, that altogether lead to a very similar commercial impression.
Finally, applicant’s stylized angled line design and registrant’s stylized dots placed on either side of the wording, A SIMPLE STORY does not change the overall commercial impression for purposes of Section 2(d). 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)).
Accordingly, upon comparison, the marks are confusingly similar because they share use of the common identical wording, ARISE thereby creating an overall similar commercial impression. Here, the average consumer would retain a general impression of the mark and would believe the goods and/or services come from the same source.
Comparison of Goods and/or Services
In this case, the goods of “Downloadable computer game software; Downloadable computer game programs; Downloadable computer game software via a global computer network and wireless devices; Downloadable Video game software” and services of “Entertainment services, namely, providing online video games; Entertainment services, namely, providing a computer game that may be accessed network-wide by network users via mobile phones, mobile devices and computers; providing online computer games via network between communications networks and computers” in the application are identical or virtually identical to goods and services identified in the registration. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. 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 registrant’s goods and/or services are related.
Finally, the examining attorney has reviewed all of applicant’s August 4, 2020 arguments and does not see sufficient evidence that the term, ARISE is weak, does not see sufficient arguments or persuasive authority to support the conclusion that the sound, appearance and commercial impression of the two marks is substantially different, that any high degree of consumer care would be sufficient to obviate this likelihood of confusion, and that applicant’s mark being of a series is relevant to any sufficient degree. Applicant’s arguments simply do not obviate the clear likelihood of confusion between these two marks.
Because the marks are similar in appearance, sound, connotation and commercial impression, the marks are confusingly similar. And because the marks are confusingly similar and the goods and/or services are not only related, but identical, there is a likelihood of confusion to relevant consumers, and therefore registration is refused.
RESPONDING TO THIS OFFICE ACTION
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.
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Terrell, Mariessa
/Mariessa Terrell/
Examining Attorney
Law Office 106
571-272-5764
mariessa.terrell@uspto.gov
RESPONSE GUIDANCE