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. 90171369
Mark: MOJANG STUDIOS
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Correspondence Address:
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Applicant: Microsoft Corporation
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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: January 12, 2021
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.
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’s applied-for mark is: “MOJANG STUDIOS” in stylized characters for “Computer software; computer and video games software; interactive entertainment software; computer software (downloadable); electronic publications; computer software publications (downloadable); data recorded electronically from the Internet; data recorded in machine readable form from the Internet; discs, tapes, cartridges, Cd-Roms, DVDs and other magnetic, electronic or optical media, all bearing computer games, software and/or audio visual content; software applications; website applications; digital games (software); computer peripherals; optically recorded data for computers; software and apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video graphic and written data; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; computer software for gathering, processing, analyzing, managing and reporting information concerning online, Internet and web site activity; computer software for data mining, data query, data processing and data analysis; computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetization and operation of the foregoing; information stored on electronic or magnetic devices, and/or by optical means; publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other networks (including websites); electronic notice boards; databases for use online; sound, video and data recordings; sunglasses; records, discs, tapes, cassettes, cartridges” in International Class 9; “Jewelry; precious stones and precious metals; badges; brooches; bracelets; bracelets made of metal; bracelets made of leather; cufflinks; clocks; tie pins; tie clips; earrings; key rings; pendants; horological and chronometric instruments including watches and clocks; wrist bands; parts and fittings for the aforesaid goods” in International Class 14; “Printed matter, paper, cardboard; printed pages downloaded from the Internet; printed publications; books; annuals; publications; comics; magazines; redeemable vouchers and pre-paid cards, newsletters; newspapers; albums; periodicals; journals; catalogues; manuals; pamphlets; leaflets; posters; stationery; labels; address books; instructional and teaching materials (except apparatus); drawings; paintings; photographs; prints; pictures; calendars; pens; pencils; pencil top ornaments; tags; gift wrap cards; wrapping paper; note pads; decorative paper items; paper party decorations; greetings cards; stickers and sticker albums; plastic materials for packaging; beer mats; covers for check books and passports; parts and fittings for all the aforesaid goods” in International Class 16; “Bags; handbags; purses; wallets; shopping bags; sports bags; tote bags; school bags; traveling bags; backpacks; rucksacks; umbrellas; briefcases; key cases; parts and fittings for the aforesaid goods” in International Class 18; “Household or kitchen utensils and containers; chinaware; glassware; porcelain, pottery and earthenware; comb cases and combs; sponges (not for surgical use); glasses; mugs; money boxes; tooth brushes; articles for cleaning purposes; baskets; containers for beverages; bottle openers; ironing boards; bottles; statuettes, figurines and models of porcelain, terracotta, glass, china or earthenware; dishes; vanity cases; soap boxes and holders; piggy banks; pots; powder compacts and puffs; drinking vessels and flasks; cocktail shakers; paper plates; tea pots; egg cups; ice cube molds; candy boxes; coasters; cork screws and coolers; crockery; cups; tableware” in International Class 21; “Bed covers; table covers; household linen; bed linen; table linen, not of paper; curtains of textile or plastic; net curtains; banners; canvas for tapestry or embroidery; towels of textile; bed clothes; face towels of textile; serviettes of textile; table napkins of textile; labels of cloth” in International Class 24; “Articles of clothing; footwear and headgear; t-shirts; shirts; trousers; sweatshirts; jackets; knitwear; hats; caps; baseball caps; neckwear; belts; scarves; gloves; sweat bands for wrists; shoes; socks; garments for women; garments for men; garments for children; apparel parts and fittings for all the aforesaid” in International Class 25; “Games and playthings; electronic games apparatus; audiovisual games on computer hardware platforms (not for use with television receivers), hand-held computer games equipment; home video game machines and hand-held video game machines; parts and fittings for all the aforesaid goods; board games; electronic game machines; game equipment for playing card games and board games, namely, playing card cases, playing card shuffling devices, playing cards, dice, cups for dice; electronic hand-held game units; stand-alone video output games machines, and manipulative puzzles; playing cards; card games; three dimensional puzzles; plush toys; soft toys; figurines; construction toys; vinyl toys; toy weapons; toy masks; toys” in International Class 28; “Cereal” in International Class 30; “Online retail store services via the Internet featuring downloadable computer video games, motion pictures and music; retail sales of software, computer and video games, motion pictures and music; retail store services provided by communications networks and on-line retail store services on a local and/or global computer and/or telecommunications networks featuring a wide variety of products, namely, computer and video games, computer software, entertainment software, computer hardware, computer game and hardware accessories, books, pre-recorded media, computer peripherals, clothing, homewares, namely, mugs, crockery, table wear, cutlery, bedding, cushions, virtual goods (games), clothing for virtual characters and educational materials; online retail store services provided by communications networks connected with video content, computer software, audio visual material, cards, music, games, software, clothing, footwear, headgear, baby clothes, children's clothes, t-shirts, jumpers, hoodies, lanyards, caps, toys, printed matter, paper goods, magazines, books, cushions, throws, pillows, bed linen, duvet covers, jewelry, key rings, mugs, bags, wallets and cases, games, toys, playthings, entertainment products, namely, games, playthings, educational products, namely, books, educational games; advertising, marketing and promotion services; advertising provided on-line, from computer databases, the Internet and communications networks; sale and rental of advertising space; dissemination of advertising material; promotion of goods and services via an on-line service with links to the websites and online services of other retail store services provided via communications networks featuring computer, electronic and entertainment products; publicity services; arranging, organizing and conducting exhibitions and events featuring a variety of activities for promotional purposes; services for the marketing, promotion, sale and retail services relating to computer software, applications, computer and video games and audio visual content; online retail services relating to computer software, applications, computer and video games and audio visual content; business data analysis services; services for research relating to customer behavior, satisfaction, attitude, effectiveness; computerized database management; marketing data integration; data storage services; data processing services; advertising and promotional services; the foregoing provided by individuals, computers, a network of interconnected computers or by remote communications devices; information, advisory and consultancy services relating to the foregoing” in International Class 35; “Providing online access to computer networks, computer databases, the Internet, on-line bulletin boards, virtual worlds, servers, virtual worlds including user generated characters, and libraries of text, graphics and audio-visual and multimedia information and entertainment; providing on-line electronic bulletin board services and chat rooms; providing of an on-line service enabling physically remote players of electronic games to communicate with selected players; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other telecommunications networks; telecommunication services for the collection and supply of information; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to remote data storage and servers; providing access to advertising, news, information and audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; providing on-line chat room for transmission of messages among computer users concerning topics; communication and broadcasting of information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means; Internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other telecommunications networks; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to advertising, news, information and audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; communication and broadcasting of information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means; internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data; provision of information relating to communications; providing voice over internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services; providing a high speed access to area networks and a global computer information network; provision access to a website or interactive community for users to share personal news, data, information, content, photos, audio and video, interests, activities and opinions and/or to receive feedback from others; provision of information relating to communications; information, advisory and consultancy services relating to the foregoing” in International Class 35; “Entertainment and education services, in the form of electronic, computer and video games provided by means of the Internet, mobile telecommunications and other remote communications devices; Internet games (non-downloadable); organizing of games; games (not downloadable) played via a global computer network; providing interactive and/or educational entertainment services; education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means; presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; publishing of computer and video games and computer and video games software; providing information in relation to computer games, namely, game players information including information regarding a player's identity and preferences, via a website; publishing of entertainment and/or educational software; arranging, organizing and conducting conferences and seminars for promotional purposes; entertainment services in the form of television programs, radio, cable, satellite and Internet programs; production and presentation of television programs, shows, films, videos and DVDs; provision of games, online games, educational services relating to entertainment; information relating to entertainment or education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; publishing; organization, production and presentation of events for educational, cultural or entertainment purposes; organization, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events; provision of Internet based games; booking of tickets for entertainment events; information and advisory services relating to any of the aforesaid” in International Class 41; “Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer and video games development; creation of computer graphics; computer game design; design and development services in relation to computer and video games and interactive entertainment products; design services relating to the production of computer and video games and interactive entertainment products; software development, design, maintenance, software programming, engineering, research and writing in the field of computer and video games; advisory and consultancy services relating to computer and video games software” in International Class 42; and “On-line social networking services; personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals” in International Class 45.
The cited registered mark is:
Comparison 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).
Applicant’s mark is “MOJANG STUDIOS” in stylized characters.
Registrant’s mark is “MOJANG” in standard character form.
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 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). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In this case, as discussed in greater detail below, applicant is required to disclaim the word “STUDIOS” because it is descriptive of applicant’s goods and services. Accordingly, the term “MOJANG” is more significant in creating a commercial impression. In the registered mark, “MOJANG” is the only term and is, thus, the dominant feature of the mark. Therefore, since the dominant elements of the marks are identical, they are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services.
Therefore, the stylized characters in the applied-for mark will not avoid a likelihood of confusion because the word portion of the registered mark could be presented in the same manner of display.
Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods and Services
Applicant’s mark is for “Computer software; computer and video games software; interactive entertainment software; computer software (downloadable); electronic publications; computer software publications (downloadable); data recorded electronically from the Internet; data recorded in machine readable form from the Internet; discs, tapes, cartridges, Cd-Roms, DVDs and other magnetic, electronic or optical media, all bearing computer games, software and/or audio visual content; software applications; website applications; digital games (software); computer peripherals; optically recorded data for computers; software and apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video graphic and written data; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; computer software for gathering, processing, analyzing, managing and reporting information concerning online, Internet and web site activity; computer software for data mining, data query, data processing and data analysis; computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetization and operation of the foregoing; information stored on electronic or magnetic devices, and/or by optical means; publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other networks (including websites); electronic notice boards; databases for use online; sound, video and data recordings; sunglasses; records, discs, tapes, cassettes, cartridges” in International Class 9; “Jewelry; precious stones and precious metals; badges; brooches; bracelets; bracelets made of metal; bracelets made of leather; cufflinks; clocks; tie pins; tie clips; earrings; key rings; pendants; horological and chronometric instruments including watches and clocks; wrist bands; parts and fittings for the aforesaid goods” in International Class 14; “Printed matter, paper, cardboard; printed pages downloaded from the Internet; printed publications; books; annuals; publications; comics; magazines; redeemable vouchers and pre-paid cards, newsletters; newspapers; albums; periodicals; journals; catalogues; manuals; pamphlets; leaflets; posters; stationery; labels; address books; instructional and teaching materials (except apparatus); drawings; paintings; photographs; prints; pictures; calendars; pens; pencils; pencil top ornaments; tags; gift wrap cards; wrapping paper; note pads; decorative paper items; paper party decorations; greetings cards; stickers and sticker albums; plastic materials for packaging; beer mats; covers for check books and passports; parts and fittings for all the aforesaid goods” in International Class 16; “Bags; handbags; purses; wallets; shopping bags; sports bags; tote bags; school bags; traveling bags; backpacks; rucksacks; umbrellas; briefcases; key cases; parts and fittings for the aforesaid goods” in International Class 18; “Household or kitchen utensils and containers; chinaware; glassware; porcelain, pottery and earthenware; comb cases and combs; sponges (not for surgical use); glasses; mugs; money boxes; tooth brushes; articles for cleaning purposes; baskets; containers for beverages; bottle openers; ironing boards; bottles; statuettes, figurines and models of porcelain, terracotta, glass, china or earthenware; dishes; vanity cases; soap boxes and holders; piggy banks; pots; powder compacts and puffs; drinking vessels and flasks; cocktail shakers; paper plates; tea pots; egg cups; ice cube molds; candy boxes; coasters; cork screws and coolers; crockery; cups; tableware” in International Class 21; “Bed covers; table covers; household linen; bed linen; table linen, not of paper; curtains of textile or plastic; net curtains; banners; canvas for tapestry or embroidery; towels of textile; bed clothes; face towels of textile; serviettes of textile; table napkins of textile; labels of cloth” in International Class 24; “Articles of clothing; footwear and headgear; t-shirts; shirts; trousers; sweatshirts; jackets; knitwear; hats; caps; baseball caps; neckwear; belts; scarves; gloves; sweat bands for wrists; shoes; socks; garments for women; garments for men; garments for children; apparel parts and fittings for all the aforesaid” in International Class 25; “Games and playthings; electronic games apparatus; audiovisual games on computer hardware platforms (not for use with television receivers), hand-held computer games equipment; home video game machines and hand-held video game machines; parts and fittings for all the aforesaid goods; board games; electronic game machines; game equipment for playing card games and board games, namely, playing card cases, playing card shuffling devices, playing cards, dice, cups for dice; electronic hand-held game units; stand-alone video output games machines, and manipulative puzzles; playing cards; card games; three dimensional puzzles; plush toys; soft toys; figurines; construction toys; vinyl toys; toy weapons; toy masks; toys” in International Class 28; “Cereal” in International Class 30; “Online retail store services via the Internet featuring downloadable computer video games, motion pictures and music; retail sales of software, computer and video games, motion pictures and music; retail store services provided by communications networks and on-line retail store services on a local and/or global computer and/or telecommunications networks featuring a wide variety of products, namely, computer and video games, computer software, entertainment software, computer hardware, computer game and hardware accessories, books, pre-recorded media, computer peripherals, clothing, homewares, namely, mugs, crockery, table wear, cutlery, bedding, cushions, virtual goods (games), clothing for virtual characters and educational materials; online retail store services provided by communications networks connected with video content, computer software, audio visual material, cards, music, games, software, clothing, footwear, headgear, baby clothes, children's clothes, t-shirts, jumpers, hoodies, lanyards, caps, toys, printed matter, paper goods, magazines, books, cushions, throws, pillows, bed linen, duvet covers, jewelry, key rings, mugs, bags, wallets and cases, games, toys, playthings, entertainment products, namely, games, playthings, educational products, namely, books, educational games; advertising, marketing and promotion services; advertising provided on-line, from computer databases, the Internet and communications networks; sale and rental of advertising space; dissemination of advertising material; promotion of goods and services via an on-line service with links to the websites and online services of other retail store services provided via communications networks featuring computer, electronic and entertainment products; publicity services; arranging, organizing and conducting exhibitions and events featuring a variety of activities for promotional purposes; services for the marketing, promotion, sale and retail services relating to computer software, applications, computer and video games and audio visual content; online retail services relating to computer software, applications, computer and video games and audio visual content; business data analysis services; services for research relating to customer behavior, satisfaction, attitude, effectiveness; computerized database management; marketing data integration; data storage services; data processing services; advertising and promotional services; the foregoing provided by individuals, computers, a network of interconnected computers or by remote communications devices; information, advisory and consultancy services relating to the foregoing” in International Class 35; “Providing online access to computer networks, computer databases, the Internet, on-line bulletin boards, virtual worlds, servers, virtual worlds including user generated characters, and libraries of text, graphics and audio-visual and multimedia information and entertainment; providing on-line electronic bulletin board services and chat rooms; providing of an on-line service enabling physically remote players of electronic games to communicate with selected players; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other telecommunications networks; telecommunication services for the collection and supply of information; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to remote data storage and servers; providing access to advertising, news, information and audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; providing on-line chat room for transmission of messages among computer users concerning topics; communication and broadcasting of information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means; Internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other telecommunications networks; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to advertising, news, information and audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; communication and broadcasting of information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means; internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data; provision of information relating to communications; providing voice over internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services; providing a high speed access to area networks and a global computer information network; provision access to a website or interactive community for users to share personal news, data, information, content, photos, audio and video, interests, activities and opinions and/or to receive feedback from others; provision of information relating to communications; information, advisory and consultancy services relating to the foregoing” in International Class 35; “Entertainment and education services, in the form of electronic, computer and video games provided by means of the Internet, mobile telecommunications and other remote communications devices; Internet games (non-downloadable); organizing of games; games (not downloadable) played via a global computer network; providing interactive and/or educational entertainment services; education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means; presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; publishing of computer and video games and computer and video games software; providing information in relation to computer games, namely, game players information including information regarding a player's identity and preferences, via a website; publishing of entertainment and/or educational software; arranging, organizing and conducting conferences and seminars for promotional purposes; entertainment services in the form of television programs, radio, cable, satellite and Internet programs; production and presentation of television programs, shows, films, videos and DVDs; provision of games, online games, educational services relating to entertainment; information relating to entertainment or education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; publishing; organization, production and presentation of events for educational, cultural or entertainment purposes; organization, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events; provision of Internet based games; booking of tickets for entertainment events; information and advisory services relating to any of the aforesaid” in International Class 41; “Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer and video games development; creation of computer graphics; computer game design; design and development services in relation to computer and video games and interactive entertainment products; design services relating to the production of computer and video games and interactive entertainment products; software development, design, maintenance, software programming, engineering, research and writing in the field of computer and video games; advisory and consultancy services relating to computer and video games software” in International Class 42; and “On-line social networking services; personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals” in International Class 45.
Registrant’s mark is for “Computer software for gathering, processing, monitoring, analyzing, managing and / or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; computer and video games software; interactive entertainment software for playing computer games and video games; downloadable electronic publications in the nature of books, comics, magazines, newsletters, catalogues and manuals in the field of computer games and video games; pre-recorded optical discs, cassettes and video tapes, computer game and video game cartridges, CD-ROMs, DVDs all bearing audio and video content from computer games and video games; computer peripherals; telephones, communications and telecommunications apparatus, namely, computers, computing devices in the nature of computer modems, computer hardware, telephones and mobile devices in the nature of cellular telephones, and tablet PCs; electronic notice boards; sunglasses; mobile telephone fascias and covers, namely, mobile telephone cases and faceplates; Downloadable films and television programs in the field of computer games and video games provided via the internet and video-on-demand service; refrigerator magnets” in International Class 9; “Jewellery; precious stones and precious metals; badges, namely, badges of precious metals; brooches; bracelets; tie clips; key chains as jewelry trinkets or fobs; horological and chronometric instruments including watches and clocks; wrist bands, namely, straps for wristwatches, rubber and silicon wristbands in the nature of a bracelet” in International Class 14; “Printed matter, namely, paper, cardboard; books in the subject matter of computer games and video games; annuals, namely, calendars; comics; magazines in the field of computer games and video games; redeemable printed vouchers and non-magnetically encoded pre-paid purchase cards allowing users to transfer financial value online via retail computer networks, newsletters in the field of computer games and video games; photo albums; journals in the field of computer games and video games; catalogues in the field of computer games and video games; manuals in the field of computer games and video games; posters; stationery; paper labels; address books; printed instructional and teaching materials in the field of computer games and video games; drawings; paintings; photographs; prints; calendars; pens; pencils; pencil top ornaments; paper tags; paper gift cards; wrapping paper; note pads; decorative paper items, namely, cake boxes and paper cake decorations; paper party decorations; greetings cards; stickers and sticker albums; plastic materials in the nature of plastic bags or plastic film for packaging; covers for chequebooks and passports” in International Class 16; “Bags, namely, athletic bags, belt bags, bags made of leather and imitation leather; handbags; purses; wallets; shopping bags, namely, mesh shopping bags, textile shopping bags; sports bags; tote bags; school bags; travelling bags; backpacks; rucksacks; umbrellas; briefcases; key cases” in International Class 18; “Household or kitchen utensils, namely, rolling pins, spatulas, whisks, and containers; chinaware, namely, plates, mugs; beverage glassware; porcelain ornaments, earthenware mugs; comb cases and combs; sponges for cleaning, bath sponges; drinking glasses; mugs; tooth brushes; plant baskets; waste baskets; insulated containers for beverage cans for domestic use; bottle openers; ironing boards; bottles sold empty; statuettes, figurines of porcelain, terracotta, glass, china or earthenware; dishes; fitted vanity cases; soap boxes and holders; piggy banks; pots; powder compacts and puffs; drinking vessels and flasks; paper plates; tea pots; ice cube moulds; candy boxes; plastic coasters; portable cork screws and coolers; crockery, namely, pots, dishes, drinking cups and saucers, bowls, serving bowls and trays; cups” in International Class 21; “Articles of clothing, namely, pullovers, blouses, coats, skirts, dresses, shorts, camisoles, undergarments, underwear, pajamas, swimsuits; footwear, t-shirts; shirts; trousers; sweatshirts; jackets; knitwear, namely, sweaters, sweater jackets, hats, scarves, and gloves; hats; caps; baseball caps; neckwear; belts; scarves; gloves; sweat bands for wrists; shoes; socks” in International Class 25; “Games and playthings, namely, balloons, decorations for Christmas trees; Electronic games apparatus, namely, arcade-type electronic video games, hand held units for playing electronic games; Board games; Electronic game machines, namely, electronic educational game machines for children; Equipment sold as a unit for playing card games; Electronic hand-held game units; game equipment sold as a unit for playing aboard game, a card game; Stand-alone video output games machines, and manipulative puzzles; Playing cards; Card games; Three dimensional puzzles; Plush toys; Soft action figures, dolls and accessories thereof; Toys, namely, action figures” in International Class 28; “Internet games, namely, providing an on-line computer game, organising of games; education and entertainment services in the form of producing, editing and distributing cinematographic, televisual, digital and motion picture films, radio and television programs and shows about computer games and video games; provision of information in the field of computer games and video games by computer networks, television, mobile telephone, cable and other electronic means; editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; entertainment services in the form of providing temporary non-downloadable electronic, computer and video games provided by means of the Internet, mobile telephone and other remote communications device” in International Class 41.
Conclusion
Because applicant’s and registrant’s marks are similar and the goods and/or services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
Ownership of Cited Registration
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 5029543.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES
Applicant has identified the following goods and services:
“Computer software; computer and video games software; interactive entertainment software; computer software (downloadable); electronic publications; computer software publications (downloadable); data recorded electronically from the Internet; data recorded in machine readable form from the Internet; discs, tapes, cartridges, Cd-Roms, DVDs and other magnetic, electronic or optical media, all bearing computer games, software and/or audio visual content; software applications; website applications; digital games (software); computer peripherals; optically recorded data for computers; software and apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video graphic and written data; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; computer software for gathering, processing, analyzing, managing and reporting information concerning online, Internet and web site activity; computer software for data mining, data query, data processing and data analysis; computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetization and operation of the foregoing; information stored on electronic or magnetic devices, and/or by optical means; publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other networks (including websites); electronic notice boards; databases for use online; sound, video and data recordings; sunglasses; records, discs, tapes, cassettes, cartridges” in International Class 9; “Jewelry; precious stones and precious metals; badges; brooches; bracelets; bracelets made of metal; bracelets made of leather; cufflinks; clocks; tie pins; tie clips; earrings; key rings; pendants; horological and chronometric instruments including watches and clocks; wrist bands; parts and fittings for the aforesaid goods” in International Class 14; “Printed matter, paper, cardboard; printed pages downloaded from the Internet; printed publications; books; annuals; publications; comics; magazines; redeemable vouchers and pre-paid cards, newsletters; newspapers; albums; periodicals; journals; catalogues; manuals; pamphlets; leaflets; posters; stationery; labels; address books; instructional and teaching materials (except apparatus); drawings; paintings; photographs; prints; pictures; calendars; pens; pencils; pencil top ornaments; tags; gift wrap cards; wrapping paper; note pads; decorative paper items; paper party decorations; greetings cards; stickers and sticker albums; plastic materials for packaging; beer mats; covers for check books and passports; parts and fittings for all the aforesaid goods” in International Class 16; “Bags; handbags; purses; wallets; shopping bags; sports bags; tote bags; school bags; traveling bags; backpacks; rucksacks; umbrellas; briefcases; key cases; parts and fittings for the aforesaid goods” in International Class 18; “Household or kitchen utensils and containers; chinaware; glassware; porcelain, pottery and earthenware; comb cases and combs; sponges (not for surgical use); glasses; mugs; money boxes; tooth brushes; articles for cleaning purposes; baskets; containers for beverages; bottle openers; ironing boards; bottles; statuettes, figurines and models of porcelain, terracotta, glass, china or earthenware; dishes; vanity cases; soap boxes and holders; piggy banks; pots; powder compacts and puffs; drinking vessels and flasks; cocktail shakers; paper plates; tea pots; egg cups; ice cube molds; candy boxes; coasters; cork screws and coolers; crockery; cups; tableware” in International Class 21; “Bed covers; table covers; household linen; bed linen; table linen, not of paper; curtains of textile or plastic; net curtains; banners; canvas for tapestry or embroidery; towels of textile; bed clothes; face towels of textile; serviettes of textile; table napkins of textile; labels of cloth” in International Class 24; “Articles of clothing; footwear and headgear; t-shirts; shirts; trousers; sweatshirts; jackets; knitwear; hats; caps; baseball caps; neckwear; belts; scarves; gloves; sweat bands for wrists; shoes; socks; garments for women; garments for men; garments for children; apparel parts and fittings for all the aforesaid” in International Class 25; “Games and playthings; electronic games apparatus; audiovisual games on computer hardware platforms (not for use with television receivers), hand-held computer games equipment; home video game machines and hand-held video game machines; parts and fittings for all the aforesaid goods; board games; electronic game machines; game equipment for playing card games and board games, namely, playing card cases, playing card shuffling devices, playing cards, dice, cups for dice; electronic hand-held game units; stand-alone video output games machines, and manipulative puzzles; playing cards; card games; three dimensional puzzles; plush toys; soft toys; figurines; construction toys; vinyl toys; toy weapons; toy masks; toys” in International Class 28; “Cereal” in International Class 30; “Online retail store services via the Internet featuring downloadable computer video games, motion pictures and music; retail sales of software, computer and video games, motion pictures and music; retail store services provided by communications networks and on-line retail store services on a local and/or global computer and/or telecommunications networks featuring a wide variety of products, namely, computer and video games, computer software, entertainment software, computer hardware, computer game and hardware accessories, books, pre-recorded media, computer peripherals, clothing, homewares, namely, mugs, crockery, table wear, cutlery, bedding, cushions, virtual goods (games), clothing for virtual characters and educational materials; online retail store services provided by communications networks connected with video content, computer software, audio visual material, cards, music, games, software, clothing, footwear, headgear, baby clothes, children's clothes, t-shirts, jumpers, hoodies, lanyards, caps, toys, printed matter, paper goods, magazines, books, cushions, throws, pillows, bed linen, duvet covers, jewelry, key rings, mugs, bags, wallets and cases, games, toys, playthings, entertainment products, namely, games, playthings, educational products, namely, books, educational games; advertising, marketing and promotion services; advertising provided on-line, from computer databases, the Internet and communications networks; sale and rental of advertising space; dissemination of advertising material; promotion of goods and services via an on-line service with links to the websites and online services of other retail store services provided via communications networks featuring computer, electronic and entertainment products; publicity services; arranging, organizing and conducting exhibitions and events featuring a variety of activities for promotional purposes; services for the marketing, promotion, sale and retail services relating to computer software, applications, computer and video games and audio visual content; online retail services relating to computer software, applications, computer and video games and audio visual content; business data analysis services; services for research relating to customer behavior, satisfaction, attitude, effectiveness; computerized database management; marketing data integration; data storage services; data processing services; advertising and promotional services; the foregoing provided by individuals, computers, a network of interconnected computers or by remote communications devices; information, advisory and consultancy services relating to the foregoing” in International Class 35; “Providing online access to computer networks, computer databases, the Internet, on-line bulletin boards, virtual worlds, servers, virtual worlds including user generated characters, and libraries of text, graphics and audio-visual and multimedia information and entertainment; providing on-line electronic bulletin board services and chat rooms; providing of an on-line service enabling physically remote players of electronic games to communicate with selected players; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other telecommunications networks; telecommunication services for the collection and supply of information; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to remote data storage and servers; providing access to advertising, news, information and audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; providing on-line chat room for transmission of messages among computer users concerning topics; communication and broadcasting of information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means; Internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other telecommunications networks; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to advertising, news, information and audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; communication and broadcasting of information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means; internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data; provision of information relating to communications; providing voice over internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services; providing a high speed access to area networks and a global computer information network; provision access to a website or interactive community for users to share personal news, data, information, content, photos, audio and video, interests, activities and opinions and/or to receive feedback from others; provision of information relating to communications; information, advisory and consultancy services relating to the foregoing” in International Class 35; “Entertainment and education services, in the form of electronic, computer and video games provided by means of the Internet, mobile telecommunications and other remote communications devices; Internet games (non-downloadable); organizing of games; games (not downloadable) played via a global computer network; providing interactive and/or educational entertainment services; education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means; presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; publishing of computer and video games and computer and video games software; providing information in relation to computer games, namely, game players information including information regarding a player's identity and preferences, via a website; publishing of entertainment and/or educational software; arranging, organizing and conducting conferences and seminars for promotional purposes; entertainment services in the form of television programs, radio, cable, satellite and Internet programs; production and presentation of television programs, shows, films, videos and DVDs; provision of games, online games, educational services relating to entertainment; information relating to entertainment or education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; publishing; organization, production and presentation of events for educational, cultural or entertainment purposes; organization, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events; provision of Internet based games; booking of tickets for entertainment events; information and advisory services relating to any of the aforesaid” in International Class 41; “Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer and video games development; creation of computer graphics; computer game design; design and development services in relation to computer and video games and interactive entertainment products; design services relating to the production of computer and video games and interactive entertainment products; software development, design, maintenance, software programming, engineering, research and writing in the field of computer and video games; advisory and consultancy services relating to computer and video games software” in International Class 42; and “On-line social networking services; personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals” in International Class 45.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications. TMEP §§1402.03(e), 1402.07(b). For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16. If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16. TMEP §1402.03(e).
If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See id. If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id. Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41. See TMEP §§1402.07(b), 1402.11(a)(x).
The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets):
Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;
Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or
Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41.
If applicant’s “clothing” or “garments” are in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” or “garments” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
However, while the word “parts and fittings” is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a).
Therefore, applicant must delete “sale(s)” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services,” “wholesale distributorships” and “on-line wholesale and retail store services” while also specifying the goods to be sold.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services,” “retail distributorships,” and “retail outlets” while also specifying the goods to be sold. See TMEP §§1301.01(a)(ii), 1402.11.
Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content. See TMEP §1402.11(a)(iii).
If applicant is an ISP, applicant must amend the identification to specify these services and to classify them in International Class 38. See id. The following format is suggested, if appropriate: “Internet service provider (ISP),” in International Class 38. If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services. See TMEP §1402.11(a)(ii). Therefore, applicant must amend the identification to specify the subject matter of the information being provided via the Internet and the proper classification. See id. In addition, the identification should not include the word “access” because this word is suggestive of services in International Class 38, as described above. See TMEP §1402.11(a)(ii)-(iii).
The following are examples of acceptable identifications for content provider services and the correct classification for those services: “providing business information via a website” in International Class 35; “providing information in the field of real estate via the Internet” in International Class 36; providing entertainment information via a website” in International Class 41; and “providing information about legal services via a website” in International Class 45.
Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content. See TMEP §1402.11(a)(iii). If applicant is an ISP, applicant must amend the identification to specify these services and to classify them in International Class 38. See id. The following format is suggested, if appropriate: “Internet service provider (ISP),” in International Class 38.
If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services. See TMEP §1402.01(a)(ii). In addition, the identification should not include the word “access” because this word is suggestive of services in International Class 38, as described above. See TMEP §1402.11(a)(ii)-(iii).
Therefore, applicant must amend the identification to specify the subject matter of the information being provided via the Internet, and the proper classification. Id.
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language underlined for clarity:
Class 9: “Recorded computer game software; downloadable computer and video
games software; downloadable interactive entertainment game software; downloadable computer game software; downloadable electronic publications in the nature of
magazines in the field of computer games; downloadable electronic publications in the nature of magazines in the field of computer software; data recorded electronically from the
Internet; data recorded in machine readable form from the Internet; discs, tapes, cartridges, Cd-Roms, and DVDs and other magnetic, electronic or optical media, all bearing
computer games, software and/or audio visual content; software applications in the nature of downloadable computer game programs; website applications; digital games
(software); computer peripherals; optically recorded data for computers; downloadable computer software and apparatus for downloading, transmitting, receiving, providing,
publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video graphic and written data; downloadable computer software for gathering, processing, monitoring,
analyzing, managing and/or reporting information; downloadable computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information concerning usage and
performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; downloadable computer software for gathering, processing, analyzing,
managing and reporting information concerning online, Internet and web site activity; downloadable computer software for data mining, data query, data processing and data analysis;
downloadable computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the
marketing, promotion, sale, distribution, monetization and operation of the foregoing; information stored on electronic or magnetic devices, and/or by optical means; downloadable
publications in electronic form in the nature of newsletters supplied on-line from a database or from facilities provided on the Internet or other networks in the field of computer
software; electronic notice boards; downloadable computer software for providing an on-line database in the field of computer games; audio and video and data
recordings about computer software; sunglasses; records, recorded computer game program discs, tapes, cassettes, and cartridges; printed pages downloaded from the
Internet, namely, downloadable written articles in the field of computer games”
Class 14: “Jewelry; precious stones and precious metals; badges of precious metal; brooches being jewelry;
bracelets; bracelets made of metal; bracelets made of leather; cufflinks; clocks; tie pins; tie clips; earrings; key rings; pendants; horological and chronometric instruments, namely, watches
and clocks; wrist bands; parts and fittings for the aforesaid goods”
Class 16: “Printed coloring books; paper; cardboard; printed pages downloaded from the Internet; printed
educational publications, namely, training manuals in the field of computer software; printed note books; annuals; publications in the nature of printed comic
books; printed comic books; printed children's magazines; printed redeemable voucher books and non-magnetically encoded pre-paid purchase cards
for allowing users to transfer financial value on-line via retail computer networks; printed newsletters about computer games; printed newspapers; photo albums;
printed periodicals in the field of computer games; blank journals for writing; printed catalogues in the field of computer games; printed manuals
in the field of computers; printed pamphlets in the field of computers; printed leaflets about computer games; printed posters; stationery; printed
paper labels; printed address books; printed instructional and teaching materials (except apparatus) in the field of computers; drawings; paintings; printed
photographs; art prints; pictures in the nature of printed photographs; printed calendars; pens; pencils; decorative pencil top ornaments; paper tags; paper
gift wrap; printed greeting cards; wrapping paper; printed note pads; decorative paper for foodstuffs; paper party decorations; printed greetings cards; stickers
and sticker albums; plastic film for use as packaging material; beer mats in the nature of coasters made of paper; covers for check books and passports; parts and
fittings for all the aforesaid goods”
Class 18: “Drawstring bags; handbags; purses; wallets; textile shopping bags; sports
bags; tote bags; school bags; traveling bags; backpacks; rucksacks; umbrellas; briefcases; key cases; parts and fittings for the aforesaid goods”
Class 21: “Household or kitchen utensils and containers, namely, dishes and household containers for foods; chinaware,
namely, dishes made of china; beverage glassware; figurines of porcelain, pottery and earthenware; comb cases and combs; kitchen sponges (not for surgical use);
drinking glasses; mugs; money boxes; tooth brushes; articles for cleaning purposes, namely, grill scrapers; baskets for household purposes; insulated containers for
beverages; bottle openers; ironing boards; reusable plastic water bottles sold empty; statuettes and figurines and models of porcelain, terracotta, glass, china or
earthenware; dishes; fitted vanity cases; soap boxes and holders; piggy banks; pots; powder compacts sold empty and powder puffs; drinking vessels and flasks; cocktail shakers;
paper plates; tea pots; egg cups; ice cube molds; candy boxes; coasters, not of paper or textile; cork screws and non-electric portable coolers; crockery, namely, pots, dishes,
drinking cups and saucers, bowls, serving bowls and trays; cups; coffee services in the nature of tableware”
Class 24: “Bed covers; plastic table covers; household linen; bed linen; table linen, not of paper; curtains of textile or plastic; net curtains; banners of textile; canvas for tapestry or embroidery; towels of textile; bed clothes, namely, bed sheets; face towels of textile; serviettes of textile; table napkins of textile; labels of cloth”
Class 25: “Articles of clothing, namely, footwear and headwear; t-shirts; shirts; trousers; sweatshirts; jackets;
knitwear, namely, hats; hats; caps being headwear; baseball caps; neckwear; belts; scarves; gloves; sweat bands for wrists; shoes; socks; garments for women, namely, shirts;
garments for men, namely, shirts; garments for children, namely, shirts; wrist bands as clothing; apparel parts and fittings for all the aforesaid”
Class 28: “Board games and playthings, namely, action figures; electronic games
apparatus other than those adapted for use with an external display screen or monitor; audiovisual games on computer hardware platforms not for use with television receivers, namely, video
game machines, hand-held computer games equipment; home video game machines and hand-held video game machines; parts and fittings for all the aforesaid goods; board games; electronic
video game machines; game equipment for playing card games and board games, namely, playing card cases, playing card shuffling devices, playing cards, dice, cups for dice; hand-held units
for playing electronic games; stand-alone video output games machines; manipulative puzzles; playing cards; card games; three dimensional puzzles; plush toys; soft sculpture
toys; modeled plastic toy figurines; construction toys; modeled vinyl toy figurines; toy weapons; toy masks; fidget toys”
Class 30: “Breakfast cereals”
Class 35: “Online retail store services via the Internet featuring downloadable computer video games, motion pictures and music;
retail store services featuring software, computer and video games, motion pictures and music; retail store services provided by communications networks and on-line retail store services on a
local and/or global computer and/or telecommunications networks featuring a wide variety of products, namely, computer and video games, computer software, entertainment software, computer hardware,
computer game and hardware accessories, books, pre-recorded media, computer peripherals, clothing, homewares, namely, mugs, crockery, table wear, cutlery, bedding, cushions, virtual games,
clothing for virtual characters and educational materials; online retail store services provided by communications networks featuring video content, computer software, audio visual material,
cards, music, games, software, clothing, footwear, headgear, baby clothes, children's clothes, t-shirts, jumpers, hoodies, lanyards, caps, toys, printed matter, paper goods, magazines, books,
cushions, throws, pillows, bed linen, duvet covers, jewelry, key rings, mugs, bags, wallets and cases, games, toys, playthings, entertainment products, namely, games, playthings, educational
products, namely, books, educational games; advertising, marketing and promotion services; digital advertising services provided on-line, from computer databases, the Internet and
communications networks; sale and rental of advertising space; dissemination of advertising material; promotion of goods and services via an on-line service with links to the websites and
online services of others provided via communications networks featuring computer, electronic and entertainment products; publicity agency services; arranging, organizing and conducting
exhibitions and events featuring a variety of activities for promotional purposes; marketing services, namely, promoting the computer software, applications, computer and video games and audio
visual content of others; online retail store services featuring computer software, applications, computer and video games and audio visual content; business data analysis
services; services for research relating to customer behavior, satisfaction, attitude, effectiveness; computerized database management, namely, consumer research; marketing data
integration, namely, analyzing and compiling business data; data storage services; data processing services; advertising and promotional services; the foregoing provided by
individuals, computers, a network of interconnected computers or by remote communications devices; information, advisory and consultancy services relating to the foregoing”
Class 38: “Providing online access to local area computer networks, computer databases, the Internet, and on-line
bulletin boards to allow consumers to access virtual worlds, servers, virtual worlds including user generated characters, and libraries of text, graphics and audio-visual and multimedia
information and entertainment; providing on-line electronic bulletin board services and internet chat rooms; providing of an on-line service enabling physically remote players of electronic
games to communicate with selected players, namely, providing voice chat services; broadcasting services and provision of telecommunication access to video and audio content provided
via a video-on-demand service via the Internet; video broadcasting via the Internet, mobile phone networks and other telecommunications networks; telecommunication access services
for the collection and supply of information; wireless electronic transmission of data and information via a global computer network; providing user access to a global computer
networks and/or telecommunications networks for downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks;
providing access to remote data storage and servers; providing telecommunication access to advertising, news, information and audio, video, text and other multimedia content, via local
and/or global computer and/or telecommunications networks; provision of online electronic communication links which transfer the web site user to other local and global web pages;
provision of electronic telecommunications connections and providing multiple-user access to the Internet and/or computer databases; transmission and/or delivery of messages,
documents and other data by electronic transmission; providing on-line chat room for transmission of messages among computer users in the field of general interest; wireless broadband
communication services and broadcasting of information and transmission of media advertising communications by computer, computer terminals, the Internet, television, mobile
communications device, telegraphy, telephone, wireless communications device or other electronic means; providing voice communication services via the Internet; communication
services, namely, transmission of audiovisual media via the Internet; communication services for the electronic transmission of advertising programs, images, text and data,
information, voices, sound and data via digital communications networks; telecommunication and broadcasting services; broadcasting via the Internet, mobile phone networks and other
telecommunications networks; electronic transmission of data and information via a global computer network; facilitating access to a worldwide computer and/or telecommunications networks for
downloading computer software and information; transmission of information via local and/or global computer and/or telecommunication networks; providing access to advertising, news, information and
audio, video, text and other multimedia content, via local and/or global computer and/or telecommunications networks; provision of electronic communication links; provision of telecommunications
connections and access to the Internet and/or computer databases; receipt and/or delivery of messages, documents and other data by electronic transmission; communication and broadcasting of
information and advertising by computer, computer terminals, the Internet, television, mobile communications device, telegraphy, telephone, wireless communications device or other electronic means;
internet communication services; audio visual communication services; communication services for the transmission of advertising, images, text and data, information, voices, sound and data;
provision of information relating to telecommunications; providing voice over internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer
terminals and instant messaging services; providing a high speed access to area networks and a global computer information network; provision access to a website or interactive community for users
to share personal news, data, information, content, photos, audio and video, interests, activities and opinions and/or to receive feedback from others; provision of information relating to
communications; information, advisory and consultancy services relating to the foregoing”
Class 41: “Entertainment and education services, namely, providing online non-downloadable electronic, computer and video
games provided by means of the Internet, mobile telecommunications and other remote communications devices; electronic games services provided by means of the internet; organizing of
games; providing online computer games (not downloadable) played via a global computer network; providing interactive and/or educational entertainment services, namely, providing
on-line interactive children's stories; education and entertainment services in the nature of ongoing television programs in the field of children's entertainment provided by computer
networks, television, mobile telephone, cable and other electronic means; presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films,
radio and television programs; publishing of computer and video games and computer and video games software; providing information in relation to electronic computer games, namely, game
players information including information regarding a player's identity and preferences, via the Internet; publishing of entertainment and/or educational software; arranging, organizing and
conducting conferences and seminars for promotional purposes; entertainment services, namely, the production of television programs, radio programs, cable television
programs, satellite television programs and Internet television programs; production and presentation of television programs, television shows, films, videos and
films on DVD; provision of games, online games, educational services relating to entertainment, namely, providing online non-downloadable game software; providing information
relating to entertainment or education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; digital
video, audio, and multimedia publishing services; organization, production and presentation of live show performances events for educational, cultural or entertainment
purposes; organization, production and presentation of video game competitions, contests, computer game software, game shows, quiz shows, fun days,
exhibitions for cultural or educational purposes, television shows, roadshow exhibitions for cultural or educational purposes, staged live cosplay entertainment events,
live show performances and participation events in the nature of video game competitions; provision of Internet based games, namely, electronic games services provided by means of
the Internet; booking of tickets for entertainment events; information and advisory services relating to any of the aforesaid”
Class 42: “Computer software development, design, maintenance, programming for others,
engineering, research and writing; advisory and consultancy services relating to computer software and computer software development, design, maintenance, consultancy, programming,
engineering, research and writing; computer software development, design, maintenance, consultancy in the design and development of computer software, programming, engineering, research and
writing; computer and video games software development for use with computers, video game program systems and computer networks; creation of computer graphics in the nature of
computer graphics design services; computer game software design; design and development services in relation to computer and video games software and interactive entertainment
products in the nature of virtual reality software; design services relating to the production of computer and video games software and interactive entertainment products in the
nature of virtual reality software; computer software development, design, maintenance, software programming for others, engineering, research and writing in the field of computer
and video games; advisory and consultancy services relating to the design and development of computer and video games software”
Class 45: “On-line social networking services; personal and social services rendered by others to meet the needs of individuals, namely, internet-based social networking services; security guard services for the protection of property and individuals”
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.
Applicant should also note and respond to the additional requirement below.
REQUIREMENT – DISCLAIM DESCRIPTIVE WORDING
The attached evidence from Collins Dictionary shows this wording means “a room or rooms where an artist, photographer, or musician works. “ Thus, the wording merely describes applicant’s goods and/or services because the goods and services are made and rendered in rooms where video game designers work.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “STUDIOS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or 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.
/Douglas A. Mondell/
Douglas A. Mondell, Esq.
Law Office 127
(571) 272-0120
douglas.mondell@uspto.gov
RESPONSE GUIDANCE
