In short, the problem is caused by an earlier registration, The 101, by DIRECTV, LLC. The trademark attorney has deemed the case "likelihood of confusion" (as seen with the Killer Instinct thing between Microsoft and Fox). I believe there is no reason for concern however. This problem is mainly due to USPTO asshattery and should impose no delays whatsoever. Nevertheless, it is a problem to be solved. Here's an excerpt from the office action, quite lengthy though:
Refusal To Register Under Section 2(d)—Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3432954. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
I. Comparison of the Marks
Applicant’s mark THE WONDERFUL 101 is confusingly similar to registrant’s mark THE 101. The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii). In this case, the addition of the laudatory term WONDERFUL does not change the overall commercial impression of the mark created by the wording “The 101.” Use of these marks on closely related goods and/or services is likely to result in confusion.
II. Comparison of the Goods and/or Services
Applicant’s goods, namely, computer game software are closely related to registrant’s services, namely, online computer games.
Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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, 1025 (Fed. Cir. 1988).
In light of the similarities between the marks and the closely related nature of the goods and/or services, the examining attorney has determined that the mark cannot proceed to registration.
Nintendo's response to this was posted on the 15th of July:
RESPONSE TO OFFICE ACTION
These remarks are in response to the 1/14/13 Office Action.
2. Section 2(d) Likelihood of Confusion
The Office Action includes a refusal to register Applicant Nintendo of America Inc.'s mark, THE WONDERFUL 101, on the basis of a likelihood of confusion with the mark in U.S. Registration No. 3432954 for THE 101. Applicant respectfully submits that the refusal under Section 2(d) of the Trademark Act is not merited and provides the following evidence and arguments in support of registration of its mark.
A. Applicant's and Registrant's Marks Themselves Are Not Similar in Appearance, Sound, Meaning or Overall Commercial Impression
While applicant's and registrant's marks share the term "101," the marks in their entireties are substantially different in appearance. Most basically, Nintendo's mark, "THE WONDERFUL 101," consists of three elements, while registrant's mark, "THE 101," only consists of two. Consumers can immediately visually distinguish the parties' marks based on the inclusion of the term "WONDERFUL" in Nintendo's mark.
Additionally, in Nintendo's mark, "WONDERFUL" is one of the leading words. It precedes "101." 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); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered" when making purchasing decisions). Therefore, consumers will focus on the term "WONDERFUL" in Nintendo's mark, which is not included in registrant's mark, THE 101.
The presence of the term "wonderful" in applicant's mark also immediately distinguishes the parties' marks based on their different meanings. "Wonderful" means "excellent; great; marvelous" and "of a sort that causes or arouses wonder; amazing; astonishing" (see http://dictionary.reference.com/browse/wonderful and Exhibit 1). The inclusion of "Wonderful" in applicant's mark adds a sense of power and significance to the mark that is not conveyed by registrant's mark. The term "wonderful" connotes "wonder," a term that people are naturally drawn to due to the potential and mystery that it implies. "Wonderful" is not a term that can be discounted as mere puffery in the context of Nintendo's mark. Rather, it adds a sense of excitement, intrigue and power. Thus, registrant's mark and applicant's mark impart significantly different meanings due to the inclusion of "wonderful" in applicant's mark.
The lettering of the parties' marks also provides the consumer a basis for visual differentiation. Applicant's mark contains the term "WONDERFUL," while registrant's mark does not. "WONDERFUL" is a large word – nine characters spoken in three syllables. As such, it is a prominent part of Nintendo's mark and an element that those viewing the mark are highly unlikely to overlook or discount given its size and placement.
Additionally, the term "Wonderful" has for years been viewed by the USPTO as a strong term and key element of registrable trademarks that warrants protection. In many situations, including those cited in Exhibit 2, the USPTO did not require a disclaimer of "Wonderful." Accordingly, consumers will view "Wonderful" as a significant term that distinguishes the video game provided by Nintendo with the services once offered by registrant.
Given the differences in the appearances, sounds and meanings of applicant's and registrant's respective marks, the evidence does not support a conclusion that the parties' marks make similar overall commercial impressions. This is especially true considering the obvious difference in the appearances of the marks, the difference in the sounds the marks make when spoken, and the significant difference in the meanings of the marks due to the inclusion of "wonderful" in applicant's mark. For these reasons, applicant submits that there is not sufficient evidence to support a finding of likelihood of confusion in the current situation.
B. Registrant's Mark, THE 101, Is a Weak Mark
Registrant's mark, THE 101, consists merely of the word "THE" followed by a number. It is Nintendo's understanding that registrant has used its mark as the name of a TV channel. As such, registrant's mark bears little inherent distinctiveness and is rightfully categorized as a weak mark.
Moreover, based on Nintendo's research, the name THE 101 has been changed and registrant's mark is no longer in use. See Exhibit 3, a page from registrant's current website announcing that the registrant has changed the name of the service formerly offered under the mark "THE 101" to "The AUDIENCE Network."
Notwithstanding the fact that there is no potential for confusion between the marks, Nintendo intends to use its mark, THE WONDERFUL 101, as a video game title. Registrant, on the other hand, has registered "THE 101" as the name of a television network for which evidence of current use cannot be found.
C. Differences in Goods/Services, Relevant Purchasers and Channels of Trade
Nintendo intends to use the mark as a video game title. As THE 101 is the name of a television station that appears to be no longer in use, there is no likelihood of confusion. Moreover, even looking strictly at registrant's identification of services in Class 41, there are clear differences with Nintendo's Class 9 goods. Registrant at one time used the name for a service focused on entertainment information. Especially when considering the additional term "Wonderful," consumers would not be confused between Nintendo's packaged video game product and registrant's television station.
The goods identified in the current application are as follows:
"Compact discs and optical discs featuring entertainment, educational, and informational content, namely, video games, puzzles, music and stories; downloadable electronic game programs; downloadable electronic game software; downloadable electronic publications, namely, video game instruction manuals; downloadable video game programs; downloadable video game software and add-on content; electronic game programs; electronic game software; electronic publications regarding video games; video game discs; video game programs; video game software," in International Class 9.
The goods listed in the cited registration are:
"Distribution of radio programs for others; entertainment services, namely, conducting contests; entertainment services, namely, providing on-line computer games; providing a computer game that may be accessed network-wide by network users; providing information on-line relating to computer games and computer enhancements for games; publication of electronic magazines; radio programming" in International Class 41.
Especially when the goods/services are considered in the context of how the parties' marks are actually used in the marketplace, it can be determined that the goods/services are indeed not sufficiently related to create a likelihood of confusion.
Nintendo's goods and the registrant's services are themselves different. Nintendo sells goods. Those goods are video/electronic games that are for use with Nintendo's video game console systems. In contrast, the registration of registrant includes a variety of entertainment services, including distributing radio programming, conducting contests, publication of electronic magazines and radio programming, in addition to providing online computer games and a computer game that can be accessed network-wide by network users.
The difference in the nature of the parties' goods/services is important because it directly impacts the type of potential buyers of the goods/services and also the channels of trade through which the goods/services move. The potential purchasers of applicant's products are video game players who are looking to buy a game to play on applicant's video game consoles. These people are typically buying their video games through retail video game stores or online. Most likely, these consumers are specifically shopping for a game for one of the Nintendo's consoles.
In contrast, registrant's registration pertains to a network programming that includes services beyond those pertaining to video games. Thus, the target customers for the parties' goods and services and the channels of trade through which the parties' respective goods and services travel are different, or at least do not have significant overlap. These differences provide further basis for the conclusion that consumers are not likely to be confused between the parties' marks when considered in the context of actual use in the marketplace.
3. Amendment to Identification of Goods
Applicant submits an amended identification of goods herewith, changing "electronic publications regarding video games" to "electronic publications, namely, booklets and manuals regarding video games."
For the above reasons, Nintendo respectfully requests that the refusal to register under Section 2(d) of the Trademark Act be withdrawn and the mark be allowed for publication. The Examining Attorney is encouraged to contact the undersigned directly with any questions.
There's a lot more on the link, plenty of image evidence from Nintendo's side. Quite interesting to see how they work with these things.
Now, the most recent event regarding this was a "661-RESPONSE AFTER NON-FINAL-ACTION-ENTERED". What that entails I don't know. Again though, this shouldn't pose too much trouble for Nintendo, but you'll never know when dealing with the USPTO.