To: | AGS LLC (trademarks@playags.com) |
Subject: | U.S. Trademark Application Serial No. 90601051 - GOLDEN FIREWORKS LION - SLAT00722 |
Sent: | November 05, 2021 04:24:31 PM |
Sent As: | ecom103@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90601051
Mark: GOLDEN FIREWORKS LION
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Correspondence Address: 6775 S. Edmond Street, Suite 300
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Applicant: AGS LLC
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Reference/Docket No. SLAT00722
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.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark GOLDEN FIREWORKS LION in standard characters for “Recorded computer software for games of chance on a computerized platform, namely, video based slot machines; Recorded game software for playing electronic games on any electronic platform” in International Class 9.
The registrant’s mark is GOLDEN LION in standard characters for “Gaming machines for gambling including slot machines or video lottery terminals; Electronic gaming machines, namely, devices which accept a wager; Reconfigurable casino gaming machines and operational game software therefor sold as a unit” in International 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 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.
Similarity of the Marks
The marks GOLDEN FIREWORKS LION and GOLDEN LION are sufficiently similar to create a likelihood of confusion.
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).
In the present case, applicant’s mark is GOLDEN FIREWORKS LION and the registrant’s mark is GOLDEN LION. The terms “GOLDEN” and “LION” in applicant’s mark and the registrant’s mark GOLDEN LION are highly similar and thus look and sound similar. 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).
The addition of the wording “FIREWORKS” in applicant’s mark does not obviate a likelihood of confusion. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Moreover, it appears that “FIREWORKS” could be viewed as specifying the type of “GOLDEN LION” good, which is all part of a “GOLDEN LION” brand. Of particular note, applicant owns a mark for GOLDEN DRAGON in addition to its applied-for mark GOLDEN FIREWORKS DRAGON, which further indicates that an entity is likely to shorten or have variations of its mark. See the attached registration and application.
As a result, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “GOLDEN” and “LION” the more dominant element of the mark, which is highly similar in appearance, sound and connotation to the registrant’s mark. In view of the shared wording “GOLDEN” and “LION” in both marks, consumers encountering applicant’s mark are likely to believe that applicant’s mark is the name of a new line of registrant’s gaming machines and/or accompanying pieces.
Accordingly, because the marks look and sound similar and the marks create the same overall commercial impression, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods
In this case, applicant’s goods for “Recorded computer software for games of chance on a computerized platform, namely, video based slot machines; Recorded game software for playing electronic games on any electronic platform” in International Class 9 are related to the registrants’ goods for “Gaming machines for gambling including slot machines or video lottery terminals; Electronic gaming machines, namely, devices which accept a wager; Reconfigurable casino gaming machines and operational game software therefor sold as a unit” in International Class 28.
Conclusion:
In summary, the marks are confusingly similar and the goods are closely related. Therefore, purchasers are likely to be confused as to the source of the goods. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
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.
/Amber K. Barreda/
Amber K. Barreda
Examining Attorney
Law Office 103
(571) 272-7314
amber.barreda@uspto.gov
RESPONSE GUIDANCE