To: | Niantic, Inc. (tmdoctc@fr.com) |
Subject: | U.S. Trademark Application Serial No. 97088390 - BOARDWALK - 516120012001 |
Sent: | March 31, 2022 02:43:26 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 97088390
Mark: BOARDWALK
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Correspondence Address:
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Applicant: Niantic, Inc.
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Reference/Docket No. 516120012001
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: March 31, 2022
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
THIS PARTIAL REFUSAL APPLIES TO CLASSES 9 AND 41 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registrations No. 5281745 and 5281746. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant has applied to register the mark BOARDWALK for use in connection with:
Class 09: Downloadable game software; downloadable game software for use on mobile devices; downloadable video game software; downloadable interactive game software; downloadable augmented reality game software; downloadable computer software for social networking; downloadable software for sending messages and chatting; downloadable software for socially interacting and connecting with other users; downloadable software for use in the management and implementation of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility token transactions; downloadable software for managing cryptocurrency transactions using blockchain technology; downloadable virtual goods, namely, computer programs featuring digital collectible emblems, trophies, badges, certificates, and cards, character clothing and character skins, wallpapers, artwork, and in-game currency for use in online virtual worlds; downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; downloadable computer software for creating and managing a personal profile that can be linked to other software applications; downloadable augmented reality software for integrating electronic data with real world environments for the purpose of mapping points of interest, communicating with other persons, and deep-linking, locating, and collecting virtual assets
Class 41: Providing online computer games; providing online video games; providing online non-downloadable game software; providing online non-downloadable video game software; providing online non-downloadable interactive game software; providing online non-downloadable augmented reality game software; providing online non-downloadable videos in the field of video games, social networking, geolocation, live events, augmented reality, and virtual assets; entertainment services, namely, providing an online virtual environment for locating, collecting, and trading virtual assets.
The cited U.S. Registration No. 5281745 is BOARDWALK SLOTS for, in relevant part, “Computer game programs; computer game software; downloadable computer game software via a global computer network and wireless devices” in Class 9.
The cited U.S. Registration No. 5281746 is BOARDWALK SLOTS for, in relevant part, “Entertainment services, namely, providing on-line computer games; entertainment services, namely, providing temporary use of non-downloadable computer games; play-for-fun electronic games services provided by means of the Internet; providing an on-line computer game in the field of casino gaming for recreational computer game playing purposes” in Class 41.
The same registrant owns both registrations.
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.
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).
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).
In this case, applicant’s BOARDWALK is confusingly similar to registrant’s BOARDWALK SLOTS marks since the marks share an overall similar appearance, sound, and connotation, thus creating a similar commercial impression. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, the first word in registrant’s marks is “BOARDWALK”, rendering it the more dominant element of the marks. Because this wording is identical to applicant’s mark BOARDWALK, the marks have a similar appearance, meaning, and sound, and are confusingly similar.
Furthermore, 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 the present case, registrant has disclaimed the wording “SLOTS”. Thus, this wording is less significant in terms of affecting the marks’ commercial impressions, and renders the wording “BOARDWALK” the more dominant element of each mark. Because this dominant wording is identical to applicant’s mark BOARDWALK, the marks have a similar appearance, meaning, and sound, and are confusingly similar.
Finally, where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b). Thus, any differences in the marks are obviated by the fact that the goods and/or services are identical and/or virtually identical.
As such, considered in their entireties and in light of similarity in appearance, sound, connotation, and commercial impression, applicant’s mark and registrant’s mark are confusingly similar pursuant to Section 2(d) of the Trademark Act.
Comparison of the Goods and Services
Regarding Registration No. 5281745, the registration use(s) broad wording to describe “Computer game programs; computer game software; downloadable computer game software via a global computer network and wireless devices”, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “Downloadable game software; downloadable game software for use on mobile devices; downloadable video game software; downloadable interactive game software; downloadable augmented reality game software”. 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 and/or services 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)).
Regarding Registration No. 5281746, the registration use(s) broad wording to describe “Entertainment services, namely, providing on-line computer games; entertainment services, namely, providing temporary use of non-downloadable computer games”, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “Providing online computer games; providing online video games; providing online non-downloadable game software; providing online non-downloadable video game software; providing online non-downloadable interactive game software; providing online non-downloadable augmented reality game software”. 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). Furthermore, the application use(s) broad wording to describe “Providing online computer games; providing online video games; providing online non-downloadable game software; providing online non-downloadable video game software; providing online non-downloadable interactive game software”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “play-for-fun electronic games services provided by means of the Internet; providing an on-line computer game in the field of casino gaming for recreational computer game playing purposes”. Id. Thus, applicant’s and registrant’s goods and/or services 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 and/or services 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 and/or services are related.
To the extent the evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for all goods and/or services. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.
Therefore, the marks are confusingly similar and the goods and/or services are related. For these reasons, registration is refused under Section 2(d) of the Trademark Act because a likelihood of confusion exists between applicant’s mark and U.S. Registration No. 5281745 and 5281746.
RESPONSE GUIDELINES AND PARTIAL ABANDONMENT ADVISORY
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.
If applicant does not respond to this Office action within the six-month period for response, International Classes 9 and 41 will be deleted from the application. The application will then proceed with International Class(es) 35, 38, and 45 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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(s) and/or requirement(s) 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.
/Derek van den Abeelen/
Trademark Examining Attorney
Law Office 126
(571) 270-3997
derek.vandenabeelen@uspto.gov
RESPONSE GUIDANCE