On January 9, 2015, the USPTO sent to Angry Video Game Nerd Movie, LLC, the production company behind the AVGN movie, an office action regarding U.S. Application No. 86401349, Angry Video Game Nerd: The Movie, refusing registration because of a likelihood of confusion with U.S. Registration No. 4070006, Angry Video Game Nerd, held by Cinemassacre Productions, LLC (James Rolfe's regular production company). Then the USPTO goes on to describe a whole slew as to why this application has been refused registration, and the reasons could be deemed rather stupid.
Anyhow, no response to this office action was given, and thus the application was abandoned on July 10, 2015, but the abandonment wasn't made public until today, August 8, 2015:
Source: http://tsdr.uspto.gov/#caseNumber=86401349&caseType=SERIAL_NO&searchType=statusSearchAbandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
The office action from January below:
- Registration refused because of a likelihood of confusion with the mark in U.S. Registration No. 4070006.
- Applicants proposed mark is ANGRY VIDEO GAME NERD: THE MOVIE. The cited mark is ANGRY VIDEO GAME NERD. The wording THE MOVIE is generic as applied to applicants services and therefore it will not serve to distinguish the two marks.
- Individuals purchasing products of these marks are likely to believe that the marks are somehow connected or affiliated with each other leading to confusion as to the source of the goods and services.
- Applicant has claimed ownership of U.S. Registration No. 85275244; however, USPTO records show ownership in an entity other than applicant. Therefore, applicant must prove ownership of this registration.
Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86401349&docId=OOA20150109112715#docIndex=0&page=1OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANTS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANTS COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 1/9/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Registration is refused under Section 2(d) of the Trademark Act. The refusal and any other issues raised in this Office action must be addressed within the specified time period indicated above. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03. Applicant should note the additional refusal under Trademark Act Sections 1, 2, and 45.
Section 2(d) Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4070006. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Similarity of 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 White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Profls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
Applicants proposed mark is ANGRY VIDEO GAME NERD: THE MOVIE. The cited mark is ANGRY VIDEO GAME NERD. The wording THE MOVIE is generic as applied to applicants services and therefore it will not serve to distinguish the two marks. Individuals purchasing the goods and services associated by both marks are likely to believe that the marks are somehow connected or affiliated with each other leading to confusion as to the source of the goods and services.
Similarity of 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 [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Applicants proposed mark is associated with motion picture films about action-comedy. The mark in the cited registration is used in connection with entertainment services, namely, providing a website featuring non-downloadable online videos, movies and theatrical films featuring entertainment and comedy. The only difference between the goods and services is the medium in which the content is delivered through.
Based on the highly related nature of the goods and services set forth in the application and cited registration, and the similar marks, the du Pont factors of the similarity of the marks and goods and services favor a finding of likelihood of confusion. Accordingly, the proposed mark is refused under Section 2(d) of the Trademark Act. Although applicants mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Assignment of Registration
Applicant has claimed ownership of U.S. Registration No. 85275244; however, USPTO records show ownership in an entity other than applicant. Therefore, applicant must prove ownership of this registration. See TMEP §812.01.
Applicant may provide evidence of ownership of the mark by satisfying one of the following:
(1) Record the assignment with the USPTOs Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: Applicant is the owner of U.S. Registration No. 85275244.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Title of a Single Work
Registration is refused because the applied-for mark, as used on the specimen of record (1) is used only as the title of a single creative work, namely, the title of a specific film; and (2) does not function as a trademark to indicate the source of applicants goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see Herbko Intl, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958); TMEP §§904.07(b), 1202.08.
In this case, the submitted specimen shows the applied-for mark, ANGRY VIDEO GAME NERD: THE MOVIE, appearing as a title of a film on a web page. Such use will be perceived by others as indicating the title of the film and not as a source indicator for motion picture films. There is no evidence in the application record that applicants film is part of a series of works, nor are there specimens or evidence in the record otherwise showing proper trademark use of the applied-for mark for the identified goods.
Therefore, consumers would view the applied-for mark as the title of a single work, rather than as a trademark to indicate the source of applicants goods and to distinguish applicants goods from others.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit evidence that the applied-for mark is used to identify a series of creative works.
(2) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
This likely has little impact on anything, but it is yet another example of USPTO's weird practices. Though what they required in terms of proving ownership wasn't met, so I guess all parties could have acted better. There you have it anyway.