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James Rolfe loses trademark rights to Angry Video Game Nerd: The Movie

R

Rösti

Unconfirmed Member
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:

Abandoned 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.
Source: http://tsdr.uspto.gov/#caseNumber=86401349&caseType=SERIAL_NO&searchType=statusSearch

The office action from January below:

Summary


  • Registration refused because of a likelihood of confusion with the mark in U.S. Registration No. 4070006.
  • Applicant’s 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 applicant’s 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.
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.

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 Int’l, 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 Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

Applicant’s 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 applicant’s 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).

Applicant’s 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 applicant’s 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 USPTO’s 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 applicant’s 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 Int’l, 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 applicant’s 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 applicant’s goods and to distinguish applicant’s 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.
Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86401349&docId=OOA20150109112715#docIndex=0&page=1

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.
 

Kamina777

Banned
May 20, 2015
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That just doesn't seem right, I would have thought a trademark like that would be bullet proof considering his brand..legal red take is a mutha.
 

Haunted

Member
Nov 16, 2006
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So James Rolfe lost the trademark rights to the James Rolfe movie starring James Rolfe because James Rolfe had already trademarked the James Rolfe character/web series featuring James Rolfe?
 

Coin Return

Loose Slot
Jun 6, 2004
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Didn't something similar happen to George Romero? Ironic considering Night of the Living Dead is one of his favorite movies.
 

Dascu

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The point is that you cannot have a trademark without a distinguishing element. Doesn't matter if you're the same owner.

Basically, what they're saying is that Rolfe/Cinemassacre should use his existing AVGN trademark. There's no reason to create an additional trademark right for the variation with "The Movie" included.

Edit: Kind of like why you have a trademark for "The Last of Us" but not for "The Last of Us Remastered".
 

HK-47

Oh, bitch bitch bitch.
Oct 24, 2007
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Rösti;174682815 said:
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.

 

toythatkills

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So James Rolfe lost the trademark rights to the James Rolfe movie starring James Rolfe because James Rolfe had already trademarked the James Rolfe character/web series featuring James Rolfe?

That's how I read it.

Wat.

The point is that you cannot have a trademark without a distinguishing element. Doesn't matter if you're the same owner.

Basically, what they're saying is that Rolfe/Cinemassacre should use his existing AVGN trademark. There's no reason to create an additional trademark right for the variation with "The Movie" included.

Edit: Kind of like why you have a trademark for "The Last of Us" but not for "The Last of Us Remastered".

Ah, so basically he hasn't lost anything and this isn't news?
 
R

Rösti

Unconfirmed Member
Thats what I got out of this.
More or less. It probably would have been easier to file an application for just "AVGN" under G&S "Motion picture films about action-comedy.", with Cinemassacre Productions as owner.
 

Dascu

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Ah, so basically he hasn't lost anything and this isn't news?

Well, I think it was kind of dumb to file for a specific trademark on this in the first place. If a different company would come out with something like "Angry Video Game Nerd: The Film" or "Annoyed Video Game Nerd: The Movie", he can already sue them with his existing AVGN trademark.

Frankly this is just good practice by the USPTO to not give out trademarks for any trivial variation.

And yes, it's non-news in that this should not obstruct the film's development. Even if the AVGN mark is owned by a different company, he's not going to sue himself.
 

Ban Puncher

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Jun 11, 2012
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I still haven't received my script or behind the scenes video

What a shitload of fuck.
 

RAWi

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Mar 8, 2012
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And yes, it's non-news in that this should not obstruct the film's development. Even if the AVGN mark is owned by a different company, he's not going to sue himself.

Has this ever happen? I wouldn't be surprised if that already happened. You know, in a world where you can sue God, everything is possible :D.

But yes, this trademark was redundant. Maybe they will try to trademark another kind of subtitle.
 

AuthenticM

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Mar 2, 2010
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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

Yeah, I wonder why.
 

Crocodile

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Apr 13, 2006
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The point is that you cannot have a trademark without a distinguishing element. Doesn't matter if you're the same owner.

Basically, what they're saying is that Rolfe/Cinemassacre should use his existing AVGN trademark. There's no reason to create an additional trademark right for the variation with "The Movie" included.

Edit: Kind of like why you have a trademark for "The Last of Us" but not for "The Last of Us Remastered".

Thank you for this translation, I couldn't make heads or tails of the OP <3
 

Dusk Golem

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Didn't something similar happen to George Romero? Ironic considering Night of the Living Dead is one of his favorite movies.

That's a bit different, it was a dumb copyright thing in the 60s that ended up making Night of the Living Dead public domain. This is just not making the movie under its own trademark, while I'm not an expert on this I'm pretty sure what's being dropped is the trademark for the film being separate from the series, which I don't believe(?) would make the movie public domain.
 

Dascu

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That's a bit different, it was a dumb copyright thing in the 60s that ended up making Night of the Living Dead public domain. This is just not making the movie under its own trademark, while I'm not an expert on this I'm pretty sure what's being dropped is the trademark for the film being separate from the series, which I don't believe(?) would make the movie public domain.
Yes. Trademarks and public domain have nothing to do with eachother. The former is a marketing tool, the latter is copyright.
 

Skux

Member
Aug 28, 2014
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So he already could use AVGN The Movie but sent in an application for it anyway and it was denied? Sounds like a stuff up on his part.
 

commish

Jason Kidd murdered my dog in cold blood!
Aug 3, 2004
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What a misleading thread title, sheesh.

Also not sure what about this is weird from the USPTO's practices.
 
R

Rösti

Unconfirmed Member
What a misleading thread title, sheesh.

Also not sure what about this is weird from the USPTO's practices.
What is misleading about the title? And weird perhaps isn't the best word, but it shouldn't take more than a few minutes for the examiner to take a look at the different companies and what connection they may have. Therefore I think some of the reasons for refusal of registration they present are a bit hasty.
 

Dascu

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Rösti;174685632 said:
What is misleading about the title? And weird perhaps isn't the best word, but it shouldn't take more than a few minutes for the examiner to take a look at the different companies and what connection they may have. Therefore I think some of the reasons for refusal of registration they present are a bit hasty.
1. He never had the rights, application was refused, nothing was lost.
2. As I explained in other posts, the people or companies involved have nothing to do with this. It's not the examiner's job to research corporate ties. In fact, that's why procedures have methods for firms to object. The examiner himself is not supposed to.
3. It means absolutely nothing in regards to whether the film will or will not be made, or how he can market it.

USPTO did just fine in this case. I would actually be more upset if they DID award him the trademark for such a trivial extension.
 
R

Rösti

Unconfirmed Member
1. He never had the rights, application was refused, nothing was lost.
2. As I explained in other posts, the people or companies involved have nothing to do with this. It's not the examiner's job to research corporate ties. In fact, that's why procedures have methods for firms to object. The examiner himself is not supposed to.
3. It means absolutely nothing in regards to whether the film will or will not be made, or how he can market it.

USPTO did just fine in this case. I would actually be more upset if they DID award him the trademark for such a trivial extension.
Fair enough. I tried to make the title correct and easy to understand, but obviously I failed on that.

Better perhaps would have been "Trademark for Angry Video Game Nerd: The Movie has been abandoned".
 

commish

Jason Kidd murdered my dog in cold blood!
Aug 3, 2004
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Rösti;174685632 said:
What is misleading about the title? And weird perhaps isn't the best word, but it shouldn't take more than a few minutes for the examiner to take a look at the different companies and what connection they may have. Therefore I think some of the reasons for refusal of registration they present are a bit hasty.

Because he didn't lose a single trademark right to the name. He basically let the application lapse because he didn't need it and was already protected. He also had a shitty lawyer because the USPTO's response was so obvious.
 

Mechanized

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Dec 29, 2010
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In the end, does this really matter? James owns the AVGN rights, so doesn't that lock the movie up for him either way?
 

toythatkills

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Rösti;174686166 said:
Fair enough. I tried to make the title correct and easy to understand, but obviously I failed on that.

Better perhaps would have been "Trademark for Angry Video Game Nerd: The Movie has been abandoned".

"Declined" sounds more accurate.
 

Kinyou

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So James Rolfe lost the trademark rights to the James Rolfe movie starring James Rolfe because James Rolfe had already trademarked the James Rolfe character/web series featuring James Rolfe?
James Rolfe totally got fucked over by James Rolfe
 

mrpeabody

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Are you guys saying you don't want to see a flood of low-budget AVGN porn? That sounds like the worst/best thing ever.
 

Blader

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Didn't something similar happen to George Romero? Ironic considering Night of the Living Dead is one of his favorite movies.

Night of the Living Dead went into public domain because the distributor fucked up. The movie was originally titled Night of the Flesh Eaters and when they renamed it they neglected to copyright the new title.
 

shaowebb

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How is this movie's plot still being used is the real question here. The plot was him trying to debunk the ET rumor about the cartridges being buried in the desert, but before he could finish the movie someone ACTUALLY went and found the carts to prove it wasn't an urban legend and it was all true.

The movie's premise was pretty well destroyed by that.
 

BulletBees

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How is this movie's plot still being used is the real question here. The plot was him trying to debunk the ET rumor about the cartridges being buried in the desert, but before he could finish the movie someone ACTUALLY went and found the carts to prove it wasn't an urban legend and it was all true.

The movie's premise was pretty well destroyed by that.
Not...really. The movie goes way beyond those ET carts being buried. Nothing was destroyed by that documentary.