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. 90013933
Mark: BLOCK STARS
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Correspondence Address: KILPATRICK TOWNSEND & STOCKTON LLP |
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Applicant: Ripple Labs Inc.
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Reference/Docket No. 1199542
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: September 25, 2020
Summary of Issues Applicant Must Address
(1) Refusal under Trademark Act Section 2(d) – Likelihood of Confusion;
(2) Requirement to Amend Recitation of Services;
(3) Requirement to Disclaim word “BLOCK” in Mark; and
(4) Requirement to Submit Information About Services
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. 4127580, 4967514, 5011953 and 5808881. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
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 registrants. 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, 177 USPQ 563 (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.
A. Comparison of Marks
Applicant’s mark BLOCK STARS is virtually identical and highly similar to the registered marks BLOCKSTAR, BLOCKSTARS!, BLOCK STARZ and design and BLOCKSTARPLANET in sound, appearance and commercial impression.
Regarding the registered marks BLOCKSTAR and BLOCKSTARS!, the only primary differences between the marks are the spacing between the words in the applied-for mark and exclamation point at the end of the registered mark BLOCKSTARS!. However, minor changes in words are insufficient alone to distinguish marks. Therefore, these minor differences do not alter the commercial impressions of the marks sufficiently to obviate the likelihood of confusion.
Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
As for the registered mark BLOCK STARZ and design, the only differences between the marks are the phonetically-equivalent letters “S” and “Z” at the end of the words “STARS” and “STARZ” in the marks and the design element in the registered mark. However, as noted above, minor changes in words are insufficient alone to distinguish marks. Therefore, the phonetically-equivalent letters “S” and “Z” at the end of the words “STARS” and “STARZ” in the marks do not alter the commercial impressions of the marks sufficiently to obviate the likelihood of confusion.
Furthermore, when evaluating a composite mark consisting of words and a design, the word portion is 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 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 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)). In this case, consumers will undoubtedly call for the goods and services in the marketplace in a similar manner, namely, BLOCK STARS and BLOCK STARZ game software and online game services.
Regarding the registered mark BLOCKSTARPLANET, 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
In the present case, the wording “BLOCKSTAR” in the registered mark is highly similar BLOCK STARS in the applied-for mark. This wording also comprises the dominant portion of the registered mark as consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark and 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); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). As such, the respective marks create similar overall commercial impressions.
What’s more, with regard to the registered mark BLOCKSTARPLANET, where the services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
B. Comparison of Goods and Services
Applicant’s “financial services” and “entertainment services are identical and closely related to the registrants’ “entertainment services, namely, providing online computer, video, and electronic games”, “cultural activities, namely, organizing community sporting and cultural events”, “electronic games services, namely, provision of computer games on-line or by means of a global computer network”, “providing information on-line relating to computer games and computer enhancements for games, all in the field of children's entertainment”, “computer game software”, “computer programmes for interactive television and for interactive games”, “interactive games for game consoles, tablets, computers and/or mobile telephones”, “interactive web-based games, downloadable”, “downloadable wallpaper for computers, tablets and mobile telephones”, “downloadable mobile telephone ring tones”, “cinematographic films featuring children's entertainment”, “animated cartoons, motion pictures, and television films and television series recorded on DVDs and CD-ROMs”, “audio books on electronic media or downloadable featuring children's entertainment, all in the field of children's entertainment”, “downloadable electronic educational game software for use on mobile devices”, “interactive educational video game programs”, “educational video game software”, “printed instructional, educational, and teaching materials for bulletin boards and displays, namely, illustrations and printed instructional phrases on card stock in the areas of classroom management, organization, math, language arts, and a variety of educational and motivational disciplines”, “paperboard decorative trim and die-cut shapes for use in the decoration of walls, doors, windows, and bulletin boards plus crafts and games in classrooms, homes, offices, and meeting rooms”, “paper letters, numbers, and punctuation marks for use in making signs, posters, displays, bulletin boards, presentations, banners, games, and crafts”, “paper banners”, “printed certificates and awards”, “bookmarks”, “printed paper products, namely, student name tags and place tags”, “printed charts for capturing student, class, or group data”, “dry-erase wall calendars”, “printed instructional, educational, and teaching materials in the fields of language arts, math, science, and social studies, as well as printed charts for recording and displaying information”, “adhesive labels”, “note pads”, “stickers”, “computer paper, letterhead paper, notepaper, stationery”, “paper pockets for holding, storing, and sorting educational, office, and crafting items, game pieces, documents, and other materials” and “urban themed clothing, specifically men’s t-shirts and women’s t-shirts” because they are financial and entertainment-related goods and services, including providing online computer, video, and electronic games, cultural activities in the nature of organizing community sporting and cultural events, providing information on-line relating to computer games and computer enhancements for games, all in the field of children's entertainment, game software and printed instructional, educational and teaching materials about financial and entertainment services likely to travel through the same channels of trade to the same class of purchasers. For example, the goods and services are likely to be advertised together in financial, educational and entertainment directories and trade publications.
Furthermore, with respect to applicant’s and registrants’ goods and services, the question of likelihood of confusion is determined based on the description of the goods and services stated in the application and registrations at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Absent restrictions in an application and/or registration, the identified goods and services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identifications set forth in the application and registrations have no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these goods and services travel in all normal channels of trade and are available to the same class of purchasers.
Further, the application uses broad wording to describe the services and this wording is presumed to encompass all services of the type described including entertainment services in the nature of providing online computer, video, and electronic games, organizing community sporting and cultural events, providing computer games on-line or by means of a global computer network and providing information on-line relating to computer games and computer enhancements for games, all in the field of children's entertainment, which are identical to the services covered by the registered mark BLOCKSTARPLANET.
Similarly, the registrations covering the marks BLOCKSTAR, BLOCKSTARS! and BLOCK STARZ use broad wording to describe the services and this wording is presumed to encompass all goods of the type described including (1) urban themed clothing, specifically men’s t-shirts and women’s t-shirts sold in connection with entertainment events such as concerts and live musical performances, (2) printed instructional, educational, and teaching materials in the fields of financial and entertainment matters and (3) downloadable electronic educational game software for use on mobile devices, interactive educational video game programs and educational video game software all relating to financial matters, which are undeniably related to applicant’s services.
In further support of the relationship between the goods and services of the parties, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrants in this case. This evidence shows that the goods and services listed therein, namely, financial and/or entertainment services and game software, printed instructional, educational, and teaching materials and t-shirts, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
What’s more, with regard to the goods associated with the registered marks BLOCKSTAR, BLOCKSTARS! and BLOCK STARZ, where the marks of the respective parties are virtually identical and highly similar, the relationship between the relevant goods and services need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).
Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrants 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 registrants. 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, 1025 (Fed. Cir. 1988).
Based on the foregoing remarks, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a 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.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
The wording “financial services” and “entertainment services” in the recitation of services is indefinite and must be amended to clarify the nature of the services intended to be associated with the applied-for mark, as noted below. TMEP §§1402.01, 1402.03.
The applicant may adopt any or all of the following descriptions, if accurate:
“Financial services, namely, [indicate specific services, e.g., financial exchange, providing financial information, cryptocurrency exchange services featuring blockchain technology and blockchain-based payment verification services]”, in International Class 36; and/or
“Entertainment services, namely, [indicate specific services, e.g., providing podcasts in the field of (indicate field or subject matter, e.g., financial matters and blockchain technology), providing a website featuring non-downloadable game software and presentation of musical performances]”, in International Class 41.
TMEP §1402.11.
For assistance with identifying and classifying services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Furthermore, any services deleted by amendment may not be reinserted at a later point in prosecution. TMEP §1402.01(e).
Disclaimer
Applicant must disclaim the descriptive word “BLOCK” apart from the mark as shown because it merely describes a feature and characteristic of the identified services, as noted by the attached sample Internet printout from applicant’s website showing the proposed mark used with podcasts about blockchain-based financial activities and blockchain-based technology. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).
A word in a mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
Furthermore, the determination of whether a word in a mark is merely descriptive is made in relation to an applicant’s services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
In this case, the attached sample Internet printouts indicate that “a blockchain is made up of a series of ‘blocks’, “[t]he blockchain software records each transaction in a block without the aid of a third party like a bank or payment processor” and “[a] blockchain, originally block chain, is a growing list of records, called blocks, that are linked using cryptography.” [Emphasis added]. This evidence clearly demonstrates the descriptive significance of the word “BLOCK” in relation to blockchain-based financial activities and entertainment services concerned with blockchain-based technology.
Applicant’s attention is also respectfully directed to the attached sample third-party registrations demonstrating the descriptive significance of the word “BLOCK” in relation to blockchain-based financial activities and blockchain-based technology. Third-party registrations featuring services the same as or similar to applicant’s services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
Based on the foregoing remarks, applicant should submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “BLOCK” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
Information Request
If applicant disclaims the word “BLOCK”, it may disregard the following requirement.
Applicant must provide the following information regarding the services and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services. Merely stating that information about the services is available on applicant’s website is insufficient to make the information of record.
If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ. If the services feature new technology and information regarding competing services is not available, applicant must provide a detailed factual description of the services. The factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(2) Applicant must respond to the following question: Will any of the identified services incorporate, utilize and/or otherwise relate to blockchain-based financial activities or blockchain-based technology?
See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
Miscellaneous
If applicant’s attorney has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Advisory Regarding E-mail Communications
If applicant’s attorney has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
/David Yontef/
Trademark Examining Attorney
Law Office 118
(571) 272-8274
david.yontef@uspto.gov
RESPONSE GUIDANCE
