From: Baird, Michael
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`Sent: 5/6/2016 6:32:01 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86354701 - PROLOGUE P GAMES - TN1840435 - EXAMINER
`BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 86354701.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 86354701
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`MARK: PROLOGUE P GAMES
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`CORRESPONDENT ADDRESS:
` HAROLD L NOVICK
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` NOVICK KIM & LEE PLLC
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` 1604 SPRING HILL RD STE 320
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` VIENNA, VA 22182-7524
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`APPLICANT: Prologue Games LLC
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` TN1840435
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`CORRESPONDENT E-MAIL ADDRESS:
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` docket@nkllaw.com
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`*86354701*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant Prologue Games LLC (“Applicant”), has appealed the examining attorney’s1 final refusal to
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`register the proposed mark, PROLOGUE GAMES, in stylized form, under Section 2(d) of the Trademark
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`Act of 1946 (as amended) (hereinafter “Trademark Act”), 15 U.S.C. §1052(d). Registration was refused
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`on the grounds that Applicant’s mark is likely to be confused with the standard character mark, SECOND
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`PROLOGUE, in U.S. Registration No. 4380373.
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`1 The application file has been reassigned to the undersigned examining attorney.
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`FACTS
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`On August 1, 2014, the applicant filed the application at issue to register the mark PROLOGUE
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`GAMES, in stylized form, alleging use in commerce for various types of computer and video game
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`software in Class 9.
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`On November 17, 2014, the examining attorney issued an Office action refusing the mark under
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`Trademark Act Section 2(d) for likelihood of confusion with the registered mark SECOND PROLOGUE, in
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`U.S. Registration No. 4380373. In addition, the applicant was required to disclaim the term “games” and
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`amend the classification of “home video game consoles used with televisions and arcade-based video
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`game consoles” in the Identification of Goods.
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`The applicant responded on May 18, 2015, and properly disclaimed the descriptive term. The
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`applicant submitted arguments against the Section 2(d) refusal and the requirement to reclassify the
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`“home video game consoles.”
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`A final Office action was issued on June 2, 2015, wherein the examining attorney maintained
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`and continued the likelihood of confusion refusal regarding the mark SECOND PROLOGUE, in U.S.
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`Registration No. 4380373, as well as the requirement to amend the classification of the “home video
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`game consoles.”
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`On December 2, 2015, the applicant filed a Request for Reconsideration in which it removed
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`“home video game consoles used with televisions and arcade-based video game consoles” from the
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`Identification of Goods, thereby overcoming the classification issue. The applicant also submitted
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`arguments against the likelihood of confusion refusal.
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`On December 28, 2015, the applicant’s Request for Reconsideration was denied. The applicant
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`filed its appeal brief on February 29, 2016.
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`ISSUE
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`The sole issue for consideration on appeal is whether the applicant’s proposed mark, PROLOGUE
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`GAMES for “[c]omputer game software for use with personal computers; Computer game software for
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`personal computers and home video game consoles; Computer programs for video and computer
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`games; Interactive video game programs; Video and computer game programs; Video game software;
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`Computer game programs downloadable via the Internet; Downloadable computer game programs;
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`Downloadable electronic game programs,” so resembles the mark SECOND PROLOGUE in U.S.
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`Registration No. 4380373 for “computer game programs for mobile phones; downloadable software for
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`use as game programs on mobile telephones and other telephone apparatus; computer game programs
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`for personal computers; downloadable software for use as computer game programs for personal
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`computers; computer game software; video game software; and computer game programs,” as to be
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`likely to cause confusion or mistake, or to deceive within the meaning of Section 2(d) of the Trademark
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`ARGUMENT
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`Act.
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a
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`registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the
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`source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of
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`likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In
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`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
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`determination.
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`In any likelihood of confusion determination, two key considerations are similarity of the marks
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`and similarity or relatedness of the goods. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015)
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`(citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A.
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`1976); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in
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`appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362,
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`101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §1207.01(b)-(b)(v). Additionally, the goods are
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`compared to determine whether they are similar. TMEP §1207.01, (a)(vi).
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`A.
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`RELATEDNESS OF THE GOODS
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`Applicant has stated an intent to use the applied-for mark in connection with “Computer game
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`software for use with personal computers; Computer game software for personal computers and home
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`video game consoles; Computer programs for video and computer games; Interactive video game
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`programs; Video and computer game programs; Video game software; Computer game programs
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`downloadable via the Internet; Downloadable computer game programs; Downloadable electronic game
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`programs.” The registrant, on the other hand, already uses its mark to identify “computer game
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`programs for mobile phones; downloadable software for use as game programs on mobile telephones
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`and other telephone apparatus; computer game programs for personal computers; downloadable
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`software for use as computer game programs for personal computers; computer game software; video
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`game software; and computer game programs.”
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`The goods of the parties are identical with regard to the wording “computer game programs for
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`personal computers.” The examining attorney also notes that registrant’s last-listed “computer game
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`programs” encompasses the entirety of Applicant’s identification. Likewise, Applicant’s “computer
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`programs for video and computer games” encompasses the totality of the registrant’s goods.
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`Absent restrictions in an application and registration, the identified goods are “presumed to
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`travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358,
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`1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Additionally, unrestricted and broad identifications are
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`presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370,
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`1374 (TTAB 2006).
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`Here, where the goods are legally identical, the examining attorney must presume that they are
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`directly competitive, moving through identical channels of trade and targeting the same purchasers.
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`Where the goods of an applicant and registrant are identical or virtually identical, the degree of
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`similarity between the marks required to support a finding of likelihood of confusion is not as great as in
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`the case of diverse goods. See United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
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`2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698,
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`1701 (Fed. Cir. 1992)); TMEP §1207.01(b).
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`B.
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`SIMILARITY OF THE MARKS
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`Applicant has proposed the mark PROLOGUE GAMES, which incorporates a design element of a
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`duck being launched from a cannon. Registrant, on the other hand, owns the mark SECOND PROLOGUE
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`in standard character form.
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`It is axiomatic that marks must be compared in their entireties. However, as the test in question
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`is that of likelihood of confusion, it matters not whether the marks can be distinguished in a side-by-side
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`comparison. Instead, the question is whether the marks are sufficiently similar in terms of their overall
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`commercial impression that confusion as to the source of the goods is likely. In re Davia, 110 USPQ2d
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`1810, 1813 (TTAB 2014); TMEP §1207.01(b).
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`In making this determination, the examining attorney considers similarities in appearance,
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`sound, connotation, and commercial impression. “Similarity in any one of these elements may be
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`sufficient to find the marks confusingly similar.” Davia, at 1812. See also In re White Swan Ltd., 8
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`USPQ2d 1534, 1535 (TTAB 1988).
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`Applicant has disclaimed the descriptive wording GAMES from the proposed mark, a tacit
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`acknowledgement that the wording in question has little source-indicating significance. See, e.g., In re
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`Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
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`Applicant’s proposed mark also contains a design element consisting of a duck being shot from a
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`cannon. The letter “P,” which appears in the literal element of the Office’s database, is located on the
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`duck’s helmet. Because of the size and location of this letter, it does not create a separate commercial
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`impression from the overall design, and is highly unlikely to be pronounced separately.
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`Although marks must be compared in their entireties, the word portion generally may be the
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`dominant and most significant feature of a mark because consumers will request the goods using the
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`wording. See In re Viterra Inc., 671 F.3d 1358, 1362, 1366, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir.
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`2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014). For this reason, greater weight is often given
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`to the word portion of marks when determining whether marks are confusingly similar. Joel Gott Wines,
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`LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc.,
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`59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii).
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`For the foregoing reasons, the examining attorney finds that the term PROLOGUE is the
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`dominant element of Applicant’s proposed mark. This same dominant term is shared by the registered
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`mark SECOND PROLOGUE.
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`Despite Applicant’s references to literary works in its brief (see Applicant’s Brief, at 4), the term
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`PROLOGUE has no defined meaning within the relevant industry; it appears to be completely arbitrary
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`when used in connection with the computer games identified in the application and registration.
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`Consequently, the overall commercial impression of the term, taken in the context of computer
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`software, is the same for both marks. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).
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`Applicant argues that the registrant’s use of the term SECOND readily distinguishes the mark, by
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`changing the meaning of the term PROLOGUE. (Brief at 4). However, as noted above, the term is
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`arbitrary with regard to the goods in question. That is, the primary significance of the term would be
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`perceived as a source-indicating trademark, and not as a descriptor or modifier of the associated
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`product. For this reason the registered mark would be highly susceptible to what is sometimes termed
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`“reverse confusion,” a belief that the second entrant into the marketplace (in this case, Applicant) is the
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`source of the original (the registrant). In short, it appears likely customers familiar with Applicant’s
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`goods may conclude that the registrant’s SECOND PROLOGUE games are merely a second version of
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`Applicant’s PROLOGUE GAMES.
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`In its brief, Applicant has appended records of four separate applications and registrations
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`which purport to demonstrate past practice of this Office.2 These documents are of minimal probative
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`value. Only one set (composed of pending application Nos. 86592157 and 86162895) references goods
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`such as those at hand, but the marks in those applications do not contain the salient portion of the
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`marks in this case, the term PROLOGUE. The other pair (Reg. No. 3643319 and pending application No.
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`86664329) also fail to include the term PROLOGUE, and furthermore reference services completely
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`unrelated to software games, and thus have no bearing on this case.
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`2 These documents were also attached to Applicant’s response dated December 2, 2015.
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` Applicant has apparently provided these examples in an effort to argue that the mere addition
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`of the term SECOND to any term is sufficient to distinguish all possible marks in all possible contexts.
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`However, as noted above, the test of likelihood of confusion must be made in the context of the specific
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`goods and specific marks. There is no “magic bullet” which, when added to the mark of another, will
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`always preempt a likelihood of confusion. That other examining attorneys may have found that other
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`marks, with other meanings, applied to other goods or services, are registrable in other contexts is
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`simply not relevant. Prior decisions and actions of other trademark examining attorneys in registering
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`other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial
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`and Appeal Board. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013).
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`Each case is decided on its own facts, and each mark stands on its own merits. See In re Binion, 93
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`USPQ2d 1531, 1536 (TTAB 2009).
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`CONCLUSION
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`The examining attorney has demonstrated that the goods in question are identical, and are
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`therefore likely to target the same consumers. The examining attorney has also shown that dominant
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`element of Applicant’s mark, PROLOGUE, is the same as the dominant element of registrant’s SECOND
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`PROLOGUE; that these two uses of the same term convey the same basic commercial impression; and
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`that consumers may believe that the registrant’s games are merely a second version or second edition
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`of applicant’s games. When confronted with identical goods bearing highly similar marks, a consumer is
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`likely to arrive at the mistaken conclusion that the goods originate from the same source. Because this
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`likelihood of confusion exists, the examining attorney respectfully requests that the refusal to register
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`pursuant to Section 2(d) of the Trademark Act be affirmed.
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`Respectfully submitted,
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`/Michael W. Baird/
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`Managing Attorney, Law Office 121
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`571-272-9487
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`Michael.Baird@uspto.gov
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`(email is for informal communications only)