To: | odis williams, P.C. (magww@live.com) |
Subject: | U.S. Trademark Application Serial No. 90061579 - MAG - N/A |
Sent: | November 13, 2020 05:57:49 PM |
Sent As: | ecom127@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 Attachment - 44 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90061579
Mark: MAG
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Correspondence Address:
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Applicant: odis williams, P.C.
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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: November 13, 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.
SECTION 2(d) 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. 3500264 and 4100735. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Registration No. 3500264 is for the mark “MAG” for the relevant goods “Video game machines for use with televisions; Electronic video game apparatus, namely, computer game joysticks for use with computers”. Registration No. 4100735 is for the mark “MAG” for the goods “Action-target games using toy replicas of weapons; toy guns; model gun kits, scale models and toy replicas of weapons; toy ammunition and toy projectiles for replica weapon model kits, scale models and toy replicas of assault rifles; toy cases and toy holsters for replica weapon model kits, scale models and toy replicas of assault rifles; scale model kits, scale models and toy replicas of weapons for virtual shooting; stand-alone video game machines designed for use with replicas of weapons for virtual shooting; targets and electronic targets for shooting games”.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
The applicant’s mark is “MAG” in standard characters. The registrants’ marks are “MAG” in standard characters and “MAG” in stylized characters.
In regards to Registration No. 4100735, applicant’s mark is “MAG” in standard characters and registrant’s mark is “MAG” in standard characters. 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.
In regards to Registration No. 3500264, the word portion of the marks is identical in appearance, sound, and meaning, with the only difference being the stylization of registrant’s mark. However, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). In this case, applicant’s mark is in standard characters and could thus be presented in the same stylization as registrant’s mark.
Therefore, the marks are confusingly similar.
Comparison of the Goods
The applicant’s goods are identified as “MAG is for a first person shooter video game title. COMPUTER GAME SOFTWARE AND VIDEO GAME SOFTWARE”. Registration No. 3500264 is for the relevant goods “Video game machines for use with televisions; Electronic video game apparatus, namely, computer game joysticks for use with computers”. Registration No. 4100735 is for the goods “Action-target games using toy replicas of weapons; toy guns; model gun kits, scale models and toy replicas of weapons; toy ammunition and toy projectiles for replica weapon model kits, scale models and toy replicas of assault rifles; toy cases and toy holsters for replica weapon model kits, scale models and toy replicas of assault rifles; scale model kits, scale models and toy replicas of weapons for virtual shooting; stand-alone video game machines designed for use with replicas of weapons for virtual shooting; targets and electronic targets for shooting games”.
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
The attached Internet evidence, consisting of http://www.playstation.com/ (video games and video game machines), http://www.nintendo.com/ (same), http://www.xbox.com/ (same), http://www.sega.com/ (video games and stand alone gaming machines), and http://www.konami.com/ (same)establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods 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).
In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective goods are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
Class 09: Downloadable computer game software; downloadable video game software
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.
REMOVE DISCLAIMER
ENTITY CLARIFICATION REQUIRED
If applicant is an individual, applicant must provide the full name of the individual and specify his or her national citizenship. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(a). Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization. 37 C.F.R. §2.32(a)(3)(ii); see TMEP §803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Gabrial Mitchell/
Gabrial Mitchell
Examining Attorney
Law Office 127
571-272-8172
Gabrial.Mitchell@USPTO.GOV
RESPONSE GUIDANCE