To: | Daniela Plattner (mwiant@snet.net) |
Subject: | U.S. Trademark Application Serial No. 90534837 - PLAYSTORMING - N/A |
Sent: | September 29, 2021 11:17:58 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90534837
Mark: PLAYSTORMING
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Correspondence Address: C/O PALM VENTURES: 19 W ELM ST
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Applicant: Daniela Plattner
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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: September 29, 2021
LIKELIHOOD OF CONFUSION – SECTION 2(d) REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the markin U.S. Registration No. 3133762. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant's mark is PLAYSTORMING (standard characters) for “Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing on-line digital products, webcasts, videos, and virtual training programs in the field of brainstorming and decision-making enhancement; Educational services, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, and brainstorming training; Educational services, namely, providing training programs, workshops, events, workbooks, and videos in the fields of brainstorming, decision-making enhancement and experiential learning” in International Class 041.
Registrant's mark is PLAYSTORM TOYS (standard characters) for “Games and playthings, namely, manipulative games; toy figures; play figures; fantasy character toys; toy action figures and accessories therefore; toy vehicles; toy figures, accessories and vehicles for play in water; mechanical toys; party favors in the nature of small toys; plush toys; manipulative puzzles; collectible toy figures; sand toys; electronic and mechanically operated educational and entertainment toys” in International Class 028.
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.
Similarities between 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).
As it relates to the registrant’s mark, 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). The registrant has disclaimed the wording TOYS. Therefore, the wording PLAYSTORM is the dominant portion of the registrant’s mark.
Accordingly, the applicant’s mark is PLAYSTORMING and the registrant’s mark is PLAYSTORM. Both marks are comprised of the identical term PLAY plus a form of the word STORM/STORMING. Moreover, both marks appear to be a take on the term BRAINSTORM/BRAINSTORMING. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Accordingly, consumers encountering the similar marks with the related goods and services would likely assume an association between the parties based on the shared wording and similar commercial impressions conveyed by the marks. Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
Applicant has applied to register its mark for “Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing on-line digital products, webcasts, videos, and virtual training programs in the field of brainstorming and decision-making enhancement; Educational services, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, and brainstorming training; Educational services, namely, providing training programs, workshops, events, workbooks, and videos in the fields of brainstorming, decision-making enhancement and experiential learning” in International Class 041.
The registrant has registered its mark for “Games and playthings, namely, manipulative games; toy figures; play figures; fantasy character toys; toy action figures and accessories therefore; toy vehicles; toy figures, accessories and vehicles for play in water; mechanical toys; party favors in the nature of small toys; plush toys; manipulative puzzles; collectible toy figures; sand toys; electronic and mechanically operated educational and entertainment toys” in International Class 028.
Conclusion
When assessing a likelihood of confusion determination, the overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In the present case, the marks are similar and the goods and services are related. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND/OR SERVICES
Applicant has applied to register its mark for “Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing on-line digital products, webcasts, videos, and virtual training programs in the field of brainstorming and decision-making enhancement; Educational services, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, and brainstorming training; Educational services, namely, providing training programs, workshops, events, workbooks, and videos in the fields of brainstorming, decision-making enhancement and experiential learning” in International Class 41.
The applicant’s identification requires amendment. Specifically, the wording “Educational services, namely, providing on-line digital products, webcasts, videos, and virtual training programs in the field of brainstorming and decision-making enhancement” and “Educational services, namely, providing training programs, workshops, events, workbooks, and videos in the fields of brainstorming, decision-making enhancement and experiential learning” requires amendment.
Applicant must clarify the wording “digital products”, “videos” and “workbooks” in the identification of goods and/or services in International Class(es) 41 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In the case of “digital products” and “events” this wording is indefinite because it does not make clear what the specific goods and/or services are. Further, applicant’s identification could identify goods and/or services in more than one international class. For example, if the applicant is offering “downloadable educational digital products, namely, downloadable videos and downloadable audio in the fields of virtual training programs in the field of brainstorming and decision-making enhancement” the proper Class is 09. However, if the applicant is offering “Educational services, namely, providing on-line digital products, namely, non-downloadable webcasts, online non-downloadable videos, and virtual training programs in the field of brainstorming and decision-making enhancement” the proper Class is International Class 41. Similarly, the wording “workbooks” in applicant’s identification could also encompass multiple classes. For example, if the applicant is providing “printed educational workbooks in the fields of brainstorming, decision-making enhancement and experiential learning” the proper class is 16.
Applicant may substitute the following wording, if accurate:
International Class 16: Printed educational workbooks in the fields of in the fields of brainstorming, decision-making enhancement and experiential learning
International Class 41: Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing on-line digital products in the nature of non-downloadable webcasts, online non-downloadable videos, and virtual training programs in the field of brainstorming and decision-making enhancement; Educational services, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, and brainstorming training; Educational services, namely, providing training programs, workshops, educational events in the nature of educational conferences, and online non-downloadable videos in the fields of brainstorming, decision-making enhancement and experiential learning
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
DOMICILE ADDRESS REQUIRED
In this case, the application record lists applicant as an individual and specifies applicant’s domicile as “c/o” or in “care of” another party’s address. In most cases, an address that is listed as “c/o” or in “care of” another party’s address is not acceptable/ as a domicile address because it does not identify the location of the place applicant resides and intends to be applicant’s principal home. See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1).
Response options. Applicant must provide its domicile street address. See 37 C.F.R. §2.32(a)(2), 2.189; TMEP §803.05. Alternatively, applicant may provide documentation showing that the listed address is, in fact, applicant’s domicile. See37 C.F.R. §2.11(b); TMEP §601.01(b)-(b)(1).
To provide applicant’s domicile street address. After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to wizard question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address. Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field. However, any street address listed in the “Mailing Address” field will be publicly viewable.
To provide documentation to support applicant’s domicile address. Applicant should provide documentation showing the name and listed domicile address of the individual, for example one of the following: (1) a current, valid signed rental, lease, or mortgage agreement; (2) a current, valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated no earlier than 60 days before the application filing date. TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b). Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information.
To provide this documentation, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the street address.
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.
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Joseph Canfield
/Joseph Canfield/
Examining Attorney
Law Office 105
(571) 270 - 0509
Joseph.Canfield@USPTO.gov
RESPONSE GUIDANCE