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Beyond Good & Evil trademark deemed likely to be confused with Bandai Namco mark

R

Rösti

Unconfirmed Member
Disclaimer: Ubisoft's original trademark application, US Serial Number 76538250, Beyond Good & Evil, filed July 25, 2003 is not affected by this office action. That application is registered and in force (maintenance due by 2025-2026).


The conflicting marks in this case.

On June 12, 2017, Ubisoft Entertainment filed in the US via the USPTO (United States Patent and Trademark Office) four trademark applications regarding Beyond Good & Evil (Beyond Good and Evil 2 premiered at E3 2017, for those that did not know) under various goods and services. One of these applications was met with an office action on September 22, 2017. That particular mark, US Serial Number 87485047, concerns these goods and services:

IC 041. US 100 101 107. G & S: Entertainment services, namely, providing an on-line computer game for others over global and local area computer networks and providing information on-line relating to computer games and video games; Entertainment services, namely, continuing television programs and interactive television programs featuring comedy, drama, live-action, and animation, broadcast over television, satellite, audio, and video media; presentation of live stage show performances, presentation of live show performances by costumed characters, and presentation of live theatrical performances; production and distribution of motion pictures; arranging of contests; providing amusement park and theme park services; organizing, conducting and operating video game competitions and tournaments; entertainment services in the nature of conducting eSports and video game contests, games, tournaments and competition; entertainment services, namely, live performances by video game players; entertainment services, namely, providing entertainment and amusement center services, namely, interactive play areas; organization of exhibitions for cultural or educational purposes; on-line non-downloadable publications, namely, on-line magazines featuring information, news and commentary in the field of video games
Source: http://tsdr.uspto.gov/#caseNumber=87485047&caseType=SERIAL_NO&searchType=statusSearch

The reason for this office action are two issues - LIKELIHOOD OF CONFUSION and PRIOR-FILED APPLICATION as well as an amendment required. The conflicting marks are held by Bandai Namco and a New York woman named Evenia Rengifo. The office action below (excerpts):

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.


ISSUE/MAILING DATE: 9/22/2017

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.

SUMMARY OF ISSUES:
Prior-Filed Application
Section 2(d) Refusal—Likelihood of Confusion
Identification of Services—Amendment Required

PRIOR-FILED APPLICATION

The filing date of pending U.S. Application Serial No. 86828970 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

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 mark in the referenced application. 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) PARTIAL REFUSAL – 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. 2866310. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely 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). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, 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 at 1355, 98 USPQ2d at 1260; 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.

Applicant seeks to register its mark, BEYOND GOOD & EVIL for, in relevant part "Entertainment services, namely, providing an on-line computer game for others over global and local area computer networks and providing information on-line relating to computer games and video games," and "entertainment services in the nature of conducting eSports and video game contests, games, tournaments and competition; entertainment services, namely, live performances by video game players; entertainment services, namely, providing entertainment and amusement center services, namely, interactive play areas; organization of exhibitions for cultural or educational purposes; on-line non-downloadable publications, namely, on-line magazines featuring information, news and commentary in the field of video games."

The cited registration is JENSEITS VON GUT UND BOSE for "Video Game Cartridges, Computer Game Programs".

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

In this case, the applicant seeks to register the English-language equivalent of a registered mark. Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).

Generally, the doctrine is applied when the English translation is a literal and direct translation of the foreign wording. TMEP §1207.01(b)(vi); see In re Aquamar, Inc., 115 USPQ2d at 1127-28 (holding MARAZUL for imitation crab meat and frozen and fresh processed fish and seafood likely to be confused with BLUE SEA for non-live and frozen fish, where “mar azul” is the Spanish equivalent of the English word “blue sea”); In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702, 704-05 (TTAB 1986) (holding LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”).

Here, the attached translation evidence establishes that the cited registration means "beyond good and evil" in German, which is a common, modern language spoken by many people in the United States. See, e.g In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983). The examining attorney has also attached evidence from www.census.gov establishing that German is spoken by approximately 1,080,000 people in the United States, which indicates that it is a common, modern language to which the doctrine of foreign equivalents is applicable. Thus, the applicant's mark and the cited registration are identical in terms of their meaning. As such, the relevant consumers would likely believe that the applicant's mark and the registrant's mark emanate from the same source, and that the applicant's mark is simply the registrant's mark translated into English. Therefore, the marks have highly similar or identical commercial impressions.

Therefore, this factor favors a finding of a likelihood of confusion.

Comparison of the Goods and Services

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).

The respective goods and/or services 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 and/or services] 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).

In this case, the cited registration covers video games and the application covers a variety of entertainment and information services featuring video games and related activities. The attached Internet evidence consists of third-party websites of entities involved in sales of video games and provision of streaming video game services, entertainment services involving video game competitions and live performances by video game players, and information services in the field of video games. For example, the evidence from www.valvesoftware.com and www.geekwire establishes that VALVE® produces video games and offers online video game services, information regarding video games and the same types of video game entertainment services identified in the applicant's application. Similarly, the evidence from www.xbox.com establishes that video games, online video game services, video game tournaments, and information about video games is provided under the XBOX® and MICROSOFT® marks. Finally, the evidence from www.playstation.com and www.playstationlifestyle.net establishes that video games, online video game services, video game information services, and video game tournament services are offered under the PLAYSTATION® mark.

This evidence establishes that the same entity commonly manufactures video games and provides the relevant video game services identified in the application, and markets these goods and services under the same mark through the same trade channels and to the same classes of consumers. Therefore, applicant’s and registrant’s goods and/or services 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). Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).

Thus, this factor favors a finding of a likelihood of confusion.

Because the marks are identical in terms of their meaning and commercial impressions, and the goods and services are highly related, registration of the applied-for mark must be refused under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Source: http://tsdr.uspto.gov/documentviewer?caseId=sn87485047&docId=OOA20170922144651#docIndex=0&page=1

So to summarize:

Bandai Namco's mark for Jenseits von Gut und Bose (which I must assume is related to Xenosaga) and Evenia Rengifo's Más allá del bien y el mal (Spanish for Beyond good and evil) are the reasons for this office action. To note is that Evania Rengifo's mark has also been met with an office action (for likelihood of confusion with Bandai Namco's mark).

Considering that Ubisoft's original mark is registered and in force I don't think this particular Beyond Good & Evil mark should it be refused registration would affect development or marketing of the upcoming game much (likely not at all). But I figured it was interesting enough to post. Also because I find it to be a rather bizarre case, but it's the USPTO after all.