United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90591351
Mark: JAWS
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Correspondence Address: |
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Applicant: Universal City Studios LLC
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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: August 27, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the present case, the applicant seeks registration of JAWS in standard character form for “Toys, games and playthings, namely, action figures and accessories therefor, bathtub toys, kites, toy building blocks, board games, action skill games, manipulative games, target games, bubble making wand and solution sets, children's multiple activity toys, costume masks, mechanical toys, toy vehicles and accessories therefor, dolls, doll accessories, doll clothing, bean bag dolls, toy figures and accessories therefor, play figures, inflatable toys, flying discs, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, roller skates, toy banks, water squirting toys and stuffed toys; Christmas tree ornaments; water globes; pinball machines; playing cards; hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor, golf and sports balls, stress relief exercise balls” in Class 28.
The cited registered marks are:
· X SERIES JAWS in standard character form for “Golf clubs; Head covers for golf clubs” in Class 28;
· JAW BATS in standard character form for “baseball bats” in Class 28;
· MECARD KING JAWS in standard character form for “Board Games; Arcade video game machines; Game apparatus for playing action type target games sold as a combined unit; nets for ball games; hand-held, non-electronic skill games; Video game machines; toys namely, soft dolls, puzzles, balloons, return top toys, toy figures attachable to pencils, rubber balls, children's multiple activity toys, basketballs, bath toys, baseballs, beach balls, collectible toy figures, dolls, doll accessories, doll playsets, electric action toys, equipment sold as a unit for playing card games, footballs, mechanical toys, toy mobiles, toy vehicles, toy watches, and toy weapons; Toys for domestic pets; Dolls; playing cards; Card games; skis; snowboards; baseball gloves; athletic sporting goods, namely, athletic wrist, ankle and joint supports; shoulder pads for athletic use; elbow guards for athletic use; shin guards for athletic use; knee guards for athletic use; ascenders being mountaineering equipment; Climbers' harness; Golf bags with or without wheels; Golf balls; Golf gloves; golf equipment namely, balls, clubs, gloves, club covers; toy bicycles other than for transport; toy scooters; Athletic protective wrist pads for skating; Athletic protective elbow pads for skating; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skating; Toy roller skates; Christmas tree ornaments and decorations, except confectionery and electric Christmas tree lights; Butterfly nets; Fishing tackle; Twirling batons; ride-on toys; Chess games” in Class 28;
· JAWS MD5 in standard character form for “Golf clubs” in Class 28;
· PRIMAL JAWS “Playing cards and card games” in Class 28; and
· JAWS OF STEEL in standard character form for, inter alia, “Computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals” in Class 28.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, applicant’s mark is JAWS in standard character form, and registrants’ marks are X SERIES JAWS in standard character form, JAW BATS in standard character form, MECARD KING JAWS in standard character form, JAWS MD5 in standard character form, PRIMAL JAWS in standard character form, and JAWS OF STEEL in standard character form. In this case, the applied-for mark JAWS, and the wording JAW or JAWS in the registered marks create a similar appearance and commercial impression. 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); TMEP §1207.01(b)(ii)-(iii).
The dominant wording in one of the registered marks is JAW, which is the singular form of the wording JAWS. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”).
The differences between the applied-for mark and the registered marks are the addition of the wording X SERIES, BATS, MECARD KING, MD5, PRIMAL, and OF STEEL. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Considering the above, the marks are sufficiently similar to cause a likelihood of confusion under Trademark Act Section 2(d).
Relatedness of the Goods
X SERIES JAWS (U.S. REG. NO. 3716685) and JAWS MD5 (U.S. REG. NO. 5969057)
In this case, applicant’s mark is JAWS in standard character form for, inter alia, “golf and sports balls” in Class 28.
The cited registered marks are:
· X SERIES JAWS in standard character form for “Golf clubs; Head covers for golf clubs” in Class 28; and
· JAWS MD5 in standard character form for “Golf clubs” in Class 28.
Here, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “golf and sports balls” and “Golf clubs; Head covers for golf clubs” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). See attached evidence from:
· Titleist:
o http://www.titleist.com/golf-clubs/;
o http://www.titleist.com/golf-balls/;
· Taylor Made:
o http://www.taylormadegolf.com/clubs.html?lang=en_US;
o http://www.taylormadegolf.com/taylormade-balls-TP5-TP5x/?lang=en_US;
o http://www.taylormadegolf.com/taylormade-accessories-headcovers/?lang=en_US;
· Wilson:
o http://www.wilson.com/en-us/golf/irons;
o http://www.wilson.com/en-us/golf/accessories/iron-headcovers-men-s; and
o http://www.wilson.com/en-us/golf/balls.
Thus, upon encountering JAWS for “golf and sports balls,” and X SERIES JAWS in standard character form for “Golf clubs; Head covers for golf clubs” and JAWS MD5 in standard character form for “Golf clubs,” consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
MECARD KING JAWS (U.S. REG. NO. 5460394)
In this case, applicant’s mark is JAWS in standard character form for “board games, action skill games, manipulative games, target games, bubble making wand and solution sets, children's multiple activity toys, costume masks, mechanical toys, toy vehicles and accessories therefor, dolls, doll accessories, doll clothing, bean bag dolls, toy figures and accessories therefor, play figures, inflatable toys, flying discs, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, roller skates, toy banks, water squirting toys and stuffed toys; Christmas tree ornaments; water globes; pinball machines; playing cards; hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor, golf and sports balls, stress relief exercise balls” in Class 28.
The cited registered mark is MECARD KING JAWS in standard character form for “Board Games; Arcade video game machines; Game apparatus for playing action type target games sold as a combined unit; nets for ball games; hand-held, non-electronic skill games; Video game machines; toys namely, soft dolls, puzzles, balloons, return top toys, toy figures attachable to pencils, rubber balls, children's multiple activity toys, basketballs, bath toys, baseballs, beach balls, collectible toy figures, dolls, doll accessories, doll playsets, electric action toys, equipment sold as a unit for playing card games, footballs, mechanical toys, toy mobiles, toy vehicles, toy watches, and toy weapons; Toys for domestic pets; Dolls; playing cards; Card games; skis; snowboards; baseball gloves; athletic sporting goods, namely, athletic wrist, ankle and joint supports; shoulder pads for athletic use; elbow guards for athletic use; shin guards for athletic use; knee guards for athletic use; ascenders being mountaineering equipment; Climbers' harness; Golf bags with or without wheels; Golf balls; Golf gloves; golf equipment namely, balls, clubs, gloves, club covers; toy bicycles other than for transport; toy scooters; Athletic protective wrist pads for skating; Athletic protective elbow pads for skating; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skating; Toy roller skates; Christmas tree ornaments and decorations, except confectionery and electric Christmas tree lights; Butterfly nets; Fishing tackle; Twirling batons; ride-on toys; Chess games” in Class 28.
Here, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “board games, action skill games, manipulative games, target games, bubble making wand and solution sets, children's multiple activity toys, costume masks, mechanical toys, toy vehicles and accessories therefor, dolls, doll accessories, doll clothing, bean bag dolls, toy figures and accessories therefor, play figures, inflatable toys, flying discs, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, roller skates, toy banks, water squirting toys and stuffed toys; Christmas tree ornaments; water globes; pinball machines; playing cards; hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor, golf and sports balls, stress relief exercise balls” and “Board Games; Arcade video game machines; Game apparatus for playing action type target games sold as a combined unit; nets for ball games; hand-held, non-electronic skill games; Video game machines; toys namely, soft dolls, puzzles, balloons, return top toys, toy figures attachable to pencils, rubber balls, children's multiple activity toys, basketballs, bath toys, baseballs, beach balls, collectible toy figures, dolls, doll accessories, doll playsets, electric action toys, equipment sold as a unit for playing card games, footballs, mechanical toys, toy mobiles, toy vehicles, toy watches, and toy weapons; Toys for domestic pets; Dolls; playing cards; Card games; skis; snowboards; baseball gloves; athletic sporting goods, namely, athletic wrist, ankle and joint supports; shoulder pads for athletic use; elbow guards for athletic use; shin guards for athletic use; knee guards for athletic use; ascenders being mountaineering equipment; Climbers' harness; Golf bags with or without wheels; Golf balls; Golf gloves; golf equipment namely, balls, clubs, gloves, club covers; toy bicycles other than for transport; toy scooters; Athletic protective wrist pads for skating; Athletic protective elbow pads for skating; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skating; Toy roller skates; Christmas tree ornaments and decorations, except confectionery and electric Christmas tree lights; Butterfly nets; Fishing tackle; Twirling batons; ride-on toys; Chess games” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). See attached evidence from:
· Hasbro:
o http://shop.hasbro.com/en-us/toys-games?q=((taxonomy.restName%3Aaction-figures-and-collectibles));
o http://shop.hasbro.com/en-us/toys-games?q=((taxonomy.restName%3Adolls-and-plush-toys));
o http://shop.hasbro.com/en-us/toys-games?q=((taxonomy.restName%3Agames-and-puzzles));
· Disney:
o http://www.shopdisney.com/search?q=ornaments&lang=default&isRegSearch=1;
o http://www.shopdisney.com/search?q=plush+toys&lang=default&isRegSearch=1;
o http://www.shopdisney.com/search?q=bath&lang=default&isRegSearch=1;
· Mattel:
o http://shop.mattel.com/shop/en-us/ms/masters-of-the-universe;
· Titleist:
o http://www.titleist.com/golf-clubs/;
o http://www.titleist.com/golf-balls/;
o http://www.titleist.com/golf-gear/golf-gloves/men/;
· Taylor Made:
o http://www.taylormadegolf.com/clubs.html?lang=en_US;
o http://www.taylormadegolf.com/taylormade-balls-TP5-TP5x/?lang=en_US;
o http://www.taylormadegolf.com/taylormade-accessories-headcovers/?lang=en_US;
· Wilson:
o http://www.wilson.com/en-us/golf/irons;
o http://www.wilson.com/en-us/golf/accessories/iron-headcovers-men-s;
o http://www.wilson.com/en-us/golf/balls; and
o http://www.wilson.com/en-us/golf/gloves.
Thus, upon encountering JAWS for “board games, action skill games, manipulative games, target games, bubble making wand and solution sets, children's multiple activity toys, costume masks, mechanical toys, toy vehicles and accessories therefor, dolls, doll accessories, doll clothing, bean bag dolls, toy figures and accessories therefor, play figures, inflatable toys, flying discs, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, roller skates, toy banks, water squirting toys and stuffed toys; Christmas tree ornaments; water globes; pinball machines; playing cards; hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor, golf and sports balls, stress relief exercise balls” and for MECARD KING JAWS for “Board Games; Arcade video game machines; Game apparatus for playing action type target games sold as a combined unit; nets for ball games; hand-held, non-electronic skill games; Video game machines; toys namely, soft dolls, puzzles, balloons, return top toys, toy figures attachable to pencils, rubber balls, children's multiple activity toys, basketballs, bath toys, baseballs, beach balls, collectible toy figures, dolls, doll accessories, doll playsets, electric action toys, equipment sold as a unit for playing card games, footballs, mechanical toys, toy mobiles, toy vehicles, toy watches, and toy weapons; Toys for domestic pets; Dolls; playing cards; Card games; skis; snowboards; baseball gloves; athletic sporting goods, namely, athletic wrist, ankle and joint supports; shoulder pads for athletic use; elbow guards for athletic use; shin guards for athletic use; knee guards for athletic use; ascenders being mountaineering equipment; Climbers' harness; Golf bags with or without wheels; Golf balls; Golf gloves; golf equipment namely, balls, clubs, gloves, club covers; toy bicycles other than for transport; toy scooters; Athletic protective wrist pads for skating; Athletic protective elbow pads for skating; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skating; Toy roller skates; Christmas tree ornaments and decorations, except confectionery and electric Christmas tree lights; Butterfly nets; Fishing tackle; Twirling batons; ride-on toys; Chess games,” consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
PRIMAL JAWS (U.S. REG. NO. 6368793)
In this case, applicant’s mark is JAWS in standard character form for, inter alia, “board games, action skill games, manipulative games, target games, playing cards” in Class 28.
The cited registered mark is PRIMAL JAWS in standard character form for “Playing cards and card games” in Class 28.
In this case, the “playing cards” goods in the application and registration are identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Further, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “board games, action skill games, manipulative games, target games” and “Playing cards and card games” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). See attached evidence from:
· Hasbro:
o http://shop.hasbro.com/en-us/toys-games?q=((taxonomy.restName%3Agames-and-puzzles));
o http://shop.hasbro.com/en-us/product/monopoly-deal-card-game:E81831FC-FCB7-4E13-9E95-CD4D1AF3DBDB;
· Dungeons and Dragons:
o http://dnd.wizards.com/products/tabletop-games/board-card-games;
o http://dnd.wizards.com/products/tabletop-games/board-card-games/dice-masters-tomb-annihilation;
· Endless Games:
o http://endlessgames.com/product/the-floor-is-lava/; and
o http://endlessgames.com/product/60-second-slam/.
Thus, upon encountering JAWS for “board games, action skill games, manipulative games, target games, playing cards” and PRIMAL JAWS for “Playing cards and card games,” consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
JAW BATS (U.S. REG. NO. 4945353)
In this case, applicant’s mark is JAWS in standard character form for, inter alia, “sports balls” in Class 28.
The cited registered mark is JAW BATS in standard character form for “Baseball bats” in Class 28.
Here, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “sports balls” and “baseball bats” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). See attached evidence from:
· Mizuno:
o http://www.mizunousa.com/product/baseball-mb380-baseball/370276;
o http://www.mizunousa.com/us/baseball/equipment/bats;
· Franklin:
o http://franklinsports.com/6-pack-practice-baseballs-with-mesh-bag;
o http://franklinsports.com/venom-1200-teeball-bat-white#;
· Baden:
o http://www.badensports.com/collections/baseball/products/perfection-pro-baseball; and
Thus, upon encountering JAWS for “sports balls” and JAW BATS in standard character form for “Baseball bats,” consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
JAWS OF STEEL (U.S. REG. NO. 6190228)
In this case, applicant’s mark is JAWS in standard character form for, inter alia, “hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor” in Class 28.
The cited registered mark is JAWS OF STEEL in standard character form for, inter alia, “Computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals” in Class 28.
In this case, the application uses broad wording to describe “hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor” in Class 28, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals” in Class 28. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Thus, upon encountering JAWS for “hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor” and JAWS OF STEEL for “Computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals,” consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Conclusion
Therefore, with the contemporaneous use of highly similar marks, consumers are likely to conclude that the goods are related and originate from the same source. As such, registration must be refused under Trademark Act Section 2(d).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal in this Office action. See TMEP §§705.02, 709.06.
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.
/Andrew Crowder-Schaefer/
Trademark Examining Attorney
Law Office 104
(571) 272-0087
andrew.crowderschaefer@uspto.gov
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