R
Rösti
Unconfirmed Member
The USPTO keeps unravelling its office actions.
On December 23, 2015, two trademarks regarding Electronic Arts' puzzle platformer Unravel were abdoned as EA failed to respond to an office action by the USPTO. An abandonment notice was mailed on January 19, 2016. The two trademarks filings are US serial number 86564978, Unravel, for goods and services "Computer game software" and US serial number 86564980, Unravel, for goods and services "Entertainment services, namely, providing an on-line computer game". What was this office action then?
Well, on June 22, 2015, the USPTO issued an office action against EA's filings on these grounds:
Sources: http://tsdr.uspto.gov/#caseNumber=86564978&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/documentviewer?caseId=sn86564978&docId=NOA20160119224154#docIndex=0&page=1
U.S. Registration No. 4227793, "Unravel", is hold by SimplyFun, a board game company, and regards a board game called "Beary's Unravel Game", which offers kids the opportunity to practice holding attention and mentally trace a path in their heads.
Let's take a look at what else the USPTO had to say about this (the whole document is 123 pages long, so I won't post all of it):
Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86564978&docId=OOA20150622103041#docIndex=1&page=1Comparison of the Goods and Services
When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
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)); TMEP §1207.01(a)(i).
If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
The applicant’s goods are “Computer game software; Downloadable computer game software via a global computer network and wireless devices; Video game software.”
The registrant’s goods are “board games; games, namely, educational games and parlor games using tiles.”
Could we perhaps be seeing a new name for this game?
Unravel me if old.
