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. 90087110
Mark: TUFF GAMING
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Correspondence Address:
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Applicant: Tuff Gaming
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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: December 01, 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.
SUMMARY OF ISSUES:
I. 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.
For the following reasons, the examining attorney concludes that there exists a likelihood of confusion between applicant’s proposed mark, which comprises the design of a gorilla holding video game controllers and incorporating the entirety of the registered marks in the cited registrations, for “Footwear; Headwear; Bottoms as clothing; Tops as clothing” and registrant’s marks:
Similarity of the 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).
In this instance, applicant has incorporated the entirety of the registered marks and incorporated them in an illustration element showing registrant’s mark as registrant uses the marks on its goods, namely, positioned in the upper-center of a video game controller in the same configuration as registrant’s game controllers. See the attached evidence from Xbox.com, which confirms the similarity of the mark component and consistency with registrant’s manner of usage on its goods, namely, on the white Xbox wireless controller design incorporated within applicant’s mark.
The attached Xbox.com release from News.Xbox.com confirms that more than 84 million Xbox 360 gaming consoles when it was in production. Further, as confirmed by the attached printout from statista.com, Microsoft is reported to have sold at least 48.34 million units of its Xbox One game consoles as of September 2020. The attached webpages from Shutterstock.com confirm that the X-sphere mark has been incorporated by registrant on its video game controllers for at least its Xbox 360, Xbox One, and its recently released Xbox Series X consoles. Further, as confirmed in the attached CNBC.com article, Microsoft reported 65 million monthly active users of its Xbox Live service as of September 2019.
In light of the extensive use of and consumer exposure to the cited registered marks in the context of video game controllers and other hardware, applicant’s inclusion of the registered marks on the controller design incorporated in the applied-for mark renders applicant’s mark confusingly similar to applicant’s. The addition of substantial additional matter to registrant’s marks in forming the applied-for mark is unlikely to obviate confusion because the evidence of record suggests the marks are quite well known. Indeed, applicant’s own description of the mark as originally submitted confirms that the gorilla depicted in the applied-for mark is “holding . . . a white xbox controller.”
Relatedness of the Goods/Services
The goods and/or services 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).
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, applicant’s goods are in the nature of “Footwear; Headwear; Bottoms as clothing; Tops as clothing,” and registrant’s goods are in the nature of video game consoles, controllers, and related hardware. Applicant’s intentional depiction of registrant’s mark upon the types of goods for which applicant holds a registration immediately suggests the existence of a relationship, such as licensing or sponsorship, between applicant’s goods and registrant’s goods. Further, various types of clothing are commonly available from producers of video game consoles with both goods bearing and/or being sold under the same mark and are thus commercially related. For example, see the attached evidence from the Xbox Gear Shop at gear.xbox.com showing the availability of clothing from registrant featuring the same sphere-X mark as used in conjunction with its console-related hardware. As additional evidence, please note the attached webpages from Playstation.com which demonstrate the use of the same stylized PS logo in connection with the manufacturers console-related hardware and clothing.
Thus, upon encountering the registered sphere-X logos used on video game console-related hardware, such as video game controllers, and applicant’s incorporation of the registered mark shown atop the design of registrant’s video game controller, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
II. ADDITIONAL SEARCH RESULTS: EARLIER-FILED PENDING APPLICATION
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 marks in the referenced applications. 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.
III. COLOR DRAWING WITH NO COLOR CLAIM OR DESCRIPTION REFERENCING COLOR – DESCRIPTION CONTAINS THIRD PARTY REGISTERED MARKS – CLARIFICATION REGARDING COLOR AND DESCRIPTION AMENDMENT REQUIRED
To clarify whether color is a feature of the mark, applicant may respond by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a new drawing showing the mark only in black and white. In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq. If color is not a feature of the mark, applicant may adopt the following suggested amended description of the mark: “The mark consists of the design of a gorilla wearing headphones and shoes and holding a video game controller in each hand; the aforementioned gorilla is wearing a heavy necklace with a pendant featuring the stylized wording TUFFGAMING.”
(2) If color is a feature of the mark, applicant must provide a complete list of all the colors claimed as a feature of the mark and a description of the literal and design elements that specifies where all the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors brown, red-brown, orange, red, grey, black, aqua, pink, yellow, blue, yellow-green, light green, white, and gold are claimed as a feature of the mark.”
Description: “The mark consists of the design of a gorilla in the colors brown, red-brown, gold, and black wearing headphones in the colors red, grey, black, white, and orange, shoes in the colors grey and black, and holding a video game controller in each hand, with the controller to the viewer’s left being in the colors black, grey, blue, pink, and red and the controller to the viewer’s right being white, blue, black, light green, yellow-green, yellow, and red; the aforementioned gorilla is wearing a heavy gold necklace with a gold pendant featuring the stylized gold wording TUFFGAMING, with the aforementioned necklace and pendant elements being outlined in the color black.”
See TMEP §807.07(a)(i)-(b).
IV. ADVISORY: PRO SE APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
How to respond. Click to file a response to this nonfinal Office action.
/Kevin S. Corwin/
Trademark Examining Attorney
Law Office 112
571-270-1521
Kevin.Corwin@uspto.gov
RESPONSE GUIDANCE
