To: | Merkury Innovations LLC (ptodocket@arelaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88214070 - PHENOM - 58188/0105 |
Sent: | 3/8/2019 1:53:26 PM |
Sent As: | ECOM123@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88214070
MARK: PHENOM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Merkury Innovations LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/8/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s applied-for mark is PHENOM for:
Class 028 - GAMING ACCESSORY PRODUCTS, NAMELY, KEYBOARDS, HEADSETS, CONTROLLERS, BUNGEES, HEADSET PERIPHERALS, PERIPHERALS BAGS, CONSOLE BAGS, SPEAKERS, EYEWEAR, MOUSE PADS, COMPUTER MICE, CHAIRS, CAPTURE DEVICES, MICROPHONES, CONSOLE STANDS, CONSOLE CONTROLLERS, CONSOLE CONTROLLER STANDS, CONSOLE CONTROLLER CHARGERS, ORGANIZERS, CONSOLE PERIPHERALS
Registrant’s mark is PHENOM for:
Class 09 - Carrying cases and protective covers for media players
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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. 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 and differences in the marks.”); TMEP §1207.01.
COMPARISON OF THE MARKS
In the present case, applicant’s mark is PHENOM and registrant’s mark is PHENOM. 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 registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS
Applicant’s goods are:
Class 028 - GAMING ACCESSORY PRODUCTS, NAMELY, KEYBOARDS, HEADSETS, CONTROLLERS, BUNGEES, HEADSET PERIPHERALS, PERIPHERALS BAGS, CONSOLE BAGS, SPEAKERS, EYEWEAR, MOUSE PADS, COMPUTER MICE, CHAIRS, CAPTURE DEVICES, MICROPHONES, CONSOLE STANDS, CONSOLE CONTROLLERS, CONSOLE CONTROLLER STANDS, CONSOLE CONTROLLER CHARGERS, ORGANIZERS, CONSOLE PERIPHERALS
Registrant’s goods are:
Class 09 - Carrying cases and protective covers for media players
In this case, the application uses broad wording to describe “PERIPHERALS BAGS, CONSOLE BAGS, […] CONSOLE PERIPHERALS” which presumably encompasses all goods of the type described, including registrant’s more narrow “Carrying cases and protective covers for media players.” 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 registrant’s goods 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 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 are related.
· http://www.nintendo.com/switch/buy-now/accessories/
· http://www.razer.com/gaming-audio/razer-nari-ultimate
· http://www.razer.com/gaming-accessories/razer-mouse-bungee-v2
· http://www.razer.com/Accessories/Razer-Ear-Cushion/p/RC30-01490400-W3M1
· http://www.razer.com/gaming-accessories/razer-headset-case
· http://www.razer.com/gaming-accessories/razer-keyboard-bag-v2
· http://www.razer.com/gaming-accessories/razer-utility-backpack
· http://www.corsair.com/us/en/
· http://www.corsair.com/us/en/Categories/Products/Cases/c/Cor_Products_Cases
· http://www.corsair.com/us/en/Categories/Products/Gaming-Keyboards/c/Cor_Products_Keyboards
· http://www.corsair.com/us/en/Categories/Products/Gaming-Headsets/c/Cor_Products_HeadSets
As applicant’s and registrant’s marks are identical and applicant’s and registrant’s goods are encompassing or highly related, registration must be refused for likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
PRIOR-FILED APPLICATION ADVISORY
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 mark in the referenced application. 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.
IDENTIFICATION OF GOODS
The identification of goods is unacceptable because portions are indefinite, overbroad, misclassified, and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.06
Generally, applicant must specify if the goods are specially and specifically adapted for use with computer games, which would classify most goods in Class 028, or state that the goods can also have broader computer good uses, which would classify most of the claimed goods in Class 009. A few items, such as “chairs,” are classified in Class 020 regardless of any such specialized use.
SUGGESTED AMENDMENT
Applicant may substitute the following wording, if accurate:
Class 009 - Gaming accessory products, namely, headsets for virtual reality games, computer keyboard controllers, headset peripherals in the nature of {specify goods, e.g., hygienic pads adapted for virtual reality headsets, hygienic covers adapted for virtual reality headsets, microphone cables, stands featuring power supply connectors specially adapted for use with headsets for virtual reality games}, peripherals bags and console bags in the nature of {specify goods, e.g., computer carrying cases, laptop carrying cases}, {specify type, e.g., bass, loud, audio, sound bar, wireless, portable vibration} speakers, eyewear, mouse pads, computer mice, microphones, bungees in the nature of holders specially adapted for computer mice to prevent tangling of cables, capture devices in the nature of video and audio recorders used to record games, console controller chargers in the nature of {specify type, e.g., battery chargers, wireless chargers}, and console peripherals, namely, {specify items, e.g., USB cables, video cables, audio cables}
Class 016 - Gaming accessory products, namely, desktop organizers
Class 020 - Gaming accessory products, namely, chairs, {specify type, e.g., non-metal fabric storage bin, drawer} organizers, organizers in the nature of plastic ducts and couplings for organizing and holding fiber optic and similar cable and wiring
Class 028 - Gaming accessory products, namely, game controllers in the nature of keyboards for computer games, gaming headsets adapted for use in playing video games, controllers for game consoles, bungees in the nature of holders specially adapted for gaming mice to prevent tangling of cables, headset peripherals in the nature of stands featuring power supply connectors specially adapted for use with gaming headsets adapted for use in playing video games, peripherals bags in the nature of protective carrying cases specially adapted for video game consoles for use with an external display screen or monitor, console bags in the nature of protective carrying cases specially adapted for video game consoles for use with an external display screen or monitor, computer mice adapted for paying video games, capture devices being structural parts of video game consoles, console stands in the nature of stands for electronic game playing apparatus, namely, { indicate specific items, e.g., video game consoles, hand-held video game units}, controllers for game consoles, console controller stands in the nature of stands for electronic game playing apparatus being video game consoles, console peripherals, namely, {specify items, e.g., controllers for game consoles, bags specially adapted for video game consoles}
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 APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(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 that are classified in at least four 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See 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.
RESPONSE GUIDELINES
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
If the applicant has any questions or requires assistance in responding to this Office Action, please telephone or email the assigned examining attorney.
/Cori Stedman/
Examining Attorney
Law Office 123
(571) 270-5090
cori.stedman@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.