To: | Wizards of the Coast LLC (chad.smith@wizards.com) |
Subject: | U.S. Trademark Application Serial No. 90904984 - EXODUS - N/A |
Sent: | November 23, 2021 09:20:57 AM |
Sent As: | ecom118@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 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90904984
Mark: EXODUS
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Correspondence Address:
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Applicant: Wizards of the Coast 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: November 23, 2021
Issue Summary
2(d) refusal
Identification of goods
Likelihood of confusion refusal under Section 2(d)
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.
Confusing similarity of the marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s mark is EXODUS. The registered marks are EXODUS BURNED; WILD WEST EXODUS WWX and design and WILD WEST EXODUS. The word EXODUS is the entirety of applicant’s mark and is an important element of the registered marks EXODUS BURNED, WILD WEST EXODUS and WILD WEST EXODUS WWX and design.
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).
Closely related nature of the goods
The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Registrant’s goods include Printed matter, namely, printed game strategy guides, science fiction books, magazines about gaming; printed publications, namely, printed game strategy guides, science fiction books, magazines about gaming; printed publications in the nature of fiction books, fantasy books, books, art books, painting guides, novels, novellas, comics, manuals, and rule books; newsletters, magazines and journals in the field of gaming and the gaming industry; printed publications in the nature of, fiction books, fantasy books, books, art books, painting guides, novels, novellas, comics, manuals, rule books, newsletters, magazines and journals on the subject of games, war games, battle games, fantasy games, hobby games, skirmish games, table top games, science fiction games, role playing games; strategy guide books for card games and role playing games; manuals for role playing games; and Games, namely, board games, tabletop games; playthings namely, action figures, miniature landscapes, buildings and vehicles, toy monster figurines; toys, namely, action figures, miniature landscapes, buildings and vehicles, monster figurines; role playing games; board games; playing cards and card games; dice; dice games; counters for games; miniatures and models; war games; battle games; fantasy games; hobby games; skirmish games; table top games; science fiction games; scale model kits; cases adapted for carrying gaming miniatures and scale model miniatures; toy model hobby craft kits for constructing toy model landscapes, scenery and action figures; toy miniature landscapes, toy scenery, toy buildings and toy vehicles for use in war games, battle games, fantasy games, hobby games, skirmish games, table top games, science fiction games, role playing games; toy and miniature parts for constructing toy and miniature scale models; electronic games other than those adapted for use with television receivers only; tabletop units for playing electronic games some in conjunction with a television or computer, namely, an electronic role-playing, battle, game; electronic game equipment with a watch function; hand-held units for playing electronic games; card games; game equipment, namely, three dimensional toy modular pieces for assembly to resemble miniature toy terrain; and Playing pieces in the nature of miniature action figures and toy model vehicles for use with table top hobby battle games in the nature of battle, war and skirmish games, and fantasy games; Tabletop hobby battle games in the nature of battle, war and skirmish games, and fantasy games, and playing equipment sold as a unit therewith; and Software for computer games; computer game software for electronic game consoles; electronic control apparatus, to be used together with a screen, namely, virtual reality headsets, tablets, mobile phones and tablets for virtual reality games; video game programs * ; all the aforementioned goods only for use in the field of virtual reality games *.
Applicant’s goods are Science fiction novels; comic books.
These are closely related goods which are identical, in part, as applicant and the owner of the WILD WEST EXODUS registrations has science fiction books and comics. Furthermore, computer games, comic books and action figures, games, toys, and toy vehicles are closely related good which are often sold together. Please note attached webpages from DC Comics and Marvel, companies who provide comics as well as games, toys, action figures and toy vehicles under the same trademarks. For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
Identification of Goods
Applicant may adopt the following wording, if accurate: Printed science fiction novels, and printed comic books.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
RESPONSE TO OFFICE ACTION
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.
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.
/John E. Michos/
Trademark Attorney
USPTO
Law Office 118
571 272 9197
john.michos@uspto.gov (informal inquiries only)
RESPONSE GUIDANCE