United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79280591
Mark: FINGERS
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Correspondence Address: rsu legal. d-003, vishal apts, |
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Applicant: DYNAMIC CONGLOMERATE PVT. LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1519031
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
PARTIAL SECTION 2(d) 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. 5326435. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Here, the applicant’s mark is the stylized word “fingers” with design for “computer software” in Class 009 and the registrant’s mark is MMM FINGERS in standard characters for “Downloadable computer game software for use on devices with a touch screen, such as mobile and portable phones and electronic tablets; software programs for video games; video game cartridges; software for electronic games, downloadable via the internet and wireless devices” in Class 009.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b ).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc ., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the design element in applicant’s mark does not create any sound, so consumers hearing the mark would not be aware of its presence. Visually, the design element occupies a smaller amount of space from the wording, which further draws consumer attention to the wording. The wording is therefore dominant.
As to the wording, the deletion of “MMM” from applicant’s mark does not sufficiently distinguish the two. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. Both terms convey a meaning to consumers relating to a part of a person’s hand, whereas “MMM” has no defined meaning alone.
Lastly, registrant’s standard character form anticipates all stylization, including that of applicant. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
For these reasons, when consumers encounter the parties' goods using marks with these similarities, they are likely to be confused as to the source of the goods. Therefore, the marks are confusingly similar.
Relatedness of the Goods
In this case, the application use broad wording to describe the relevant goods (“computer software”), which presumably encompasses all goods of the type described, including registrant’s more narrow goods (“Downloadable computer game software for use on devices with a touch screen, such as mobile and portable phones and electronic tablets; software programs for video games”). See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Trademark Act Section 2(d).
Response to Refusal
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
IDENTIFICATION OF GOODS AMENDMENT REQUIRED
There are many entries in the identification of goods which are indefinite and must be clarified because they do not meet the USPTO’s specificity requirements. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant should review the bolded suggestions below and may adopt the following language, if accurate:
Applicant may substitute the following wording, if accurate:
Class 009: Parts, fittings, peripherals and accessories with all interactive functions related to computers in the nature of {specify e.g.,
laptops}; desktop computers; notebook computers; laptop computers; computer monitor; computer memory hardware; computer networking and accessing server and hardware in the
nature of {specify e.g., computers}; computer network-attached storage [NAS] hardware; tablet computers; pen tablet computers; personal computer;
handheld computers; document printers; scanners; fax machines; computer docking station; batteries and batteries charges; power adapters; headphones; headsets for telephones; picture projectors; loud speakers; wireless controllers to remotely monitor and control the function and status of other
electrical, electronic, and mechanical devices or systems; hard disk drives; cd rom drives; digital video disc drives; optical disk drives; communications processors; pulse code modulating
processors; modems; magnetic tape drives; pc cards in the nature of PC tablets; memory cards; blank smart cards; ethernet cards in the
nature of Ethernet cables; computer memory devices; add-on-cards in the nature of {specify using common commercial name e.g., microchip cards} for
computers; memory boards; electronic memory integrated circuit chips for {specify purpose e.g., for encoding and decoding digital video}; electrical cable; audio cable;
communications cables; power cables; electric cables; computer cables; cable connectors; cable adapters for headphones; coaxial cable connectors; electricity connectors; coaxial
connector cables; power connectors; electrical connectors; electronic connectors; electric adapter connectors (electric-);
electrical wire connectors (electricity); downloadable utility software for {specify function of software
e.g., database management}; computer software packages for {specify function of software e.g., database management}; data storage devices in the nature
of {specify e.g., Blank tapes for storage of computer data}; data storage apparatus in the nature of specify e.g., Blank tapes for
storage of computer data}; apparatus for data processing; downloadable computer software to enable retrieval of data; data processors; video processors; digital sound processors; digital voice signal processors; processors in the nature of (central processing
units); data networks in the nature of {further specify e.g., Downloadable computer software for administration of computer networks}; computer
networks in the nature of {further specify e.g., Downloadable computer software for administration of computer networks}; data transmission networks in the
nature of {further specify e.g., Downloadable computer software for administration of computer networks}; computer memories; electronic memories; disc memories; external memories for cell phones;
computer styli; memories for use with computers; optical data storage drives in the nature of {further specify e.g., computer storage devices, namely, blank flash drives};
apparatus for data storage; data protection backup units, namely, {specify using common commercial name of the goods e.g., Blank tapes for storage of computer
data}; downloadable computer software for {specify function e.g., database management}; downloadable network management software;
downloadable telecommunications software; downloadable network access server operating software; downloadable computer software for
document management; memory storage devices in the nature of {specify e.g., Electronic storage device in the nature of memory media for storing information
collected from medical ventilators}; storage apparatus for computer data in the nature of {further specify e.g., blank tapes for storage of computer data}; storage apparatus
for computer programs in the nature of {Blank tapes for storage of computer data}; computer hardware; computer programs for project management, downloadable; information
technology and audio-visual equipment, namely, {specify actual equipment e.g., computers and cameras}; data storage media, namely, {further specify e.g., blank
tapes for storage of computer data}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission
or reproduction of sound or images; blank magnetic data carriers; blank recording discs; blank compact discs; data processing
equipment, namely, network devices for use in computer network security, unauthorized network intrusion detection and network misuse in the nature of {specify actual devices e.g.,
Computer network interface devices}; network appliances for protecting computer networks and components against attack in the nature of {specify actual devices and components
e.g., Computer network interface devices}; handheld computers with wireless email and wireless access to electronic communications networks; power banks in the nature of a
battery pack; computer power Inverter; cabinets adapted to hold computers; computer switched mode power supply; electric power supply units; electronic handheld and portable devices in the nature of {specify actual devices e.g., mobile phones}; netbook computers; touch pads; handheld computer; computer touch screen pads; notebook computer cooling pads; laptop numeric
pads; mobile phones; mobile internet devices in the nature of {specify actual devices using common commercial or generic name of the goods}; tablet personal computers; laptop;
e-book readers; headphones with mic; microphones; earphones; barcode reader; usb dongle being wireless network adapters; usb hubs; computer network hubs; electronic card reader; led computer monitor; lcd computer monitor; plasma computer monitor; web cameras; pt in the nature of {specify what is meant by “pt” using commercial name for the goods}camearas; cctv cameras; TV tuners; tv cards in the nature of {further specify these
goods using common commercial or generic name of the goods}; storage device in the nature of like pen drives in the nature of
hard drives for computers, ssds in the nature of {specify using actual name}, portable blank hard drive for computers; laptop
power adapters; mobile power adapters; mobile cables in the nature of optical cables; type-c adapters in the nature
of power adapters; motherboards; chipsets; central processing units [cpu]; drive controller cards in the nature of microchip cards; drive raid
cards in the nature of microchip cards; solid state drives [ssds]; optical disc drives [odds]; computer desktop fan
in the nature of Internal cooling fans for computers; Power controllers; visual displacy units in the nature of computer
[monitors]; video display graphics cards [graphics]; graphics processing units [gpus]; joysticks for use with computers, other than for video games; network interface card for data processing equipment in the form of
printed circuits [nic]; power supply unit in the nature of batteries [psu]; webcams; webcameras; electric
transformer being voltage stabilisers; personal stereos; mounts for mobile phones; electric control devices for mobile platforms; computer peripherals for
accessing and transmitting data and content among consumer electronics devices; computerised digital smart watches compatible with mobiles phones; computer multi media card in the
nature of Blank integrated circuit cards; security systems for computer hardware and software, namely, firewalls, network access server hardware for creating and maintaining firewalls, virtual
private network (vpn) computer hardware and downloadable computer server operating software for creating and maintaining firewalls; computer hardware and downloadable software for use in protecting computer networks from data theft or damage by unauthorized users; computer hardware and downloadable software for
creating, facilitating, and managing remote access to and communication with local area networks (lans), virtual private networks (vpn), wide area networks (wans) and global computer networks;
downloadable computer software and hardware for use in providing multiple user access to a global computer information network for searching, retrieving, transferring,
manipulating and disseminating a wide range of information; active and passive networking equipment namely, {further specify e.g., telecommunications base station equipment for
cellular and fixed networking and communications applications}; computer software tools, namely, downloadable utility software for the facilitation of third party software
applications; optical couplers; network router [adsl, gsm, broadband, vdsl], wireless access point devices; computer newtwork adapters; utp in the nature of {specify what is meant by “UTP”} lan cables; patch cord cable in
the nature of {further specify e.g., Cable modem}; electric plugs; digital video recorder (DVR); connector in the nature of {further specify e.g., Cable connectors}, power
cable and power pins in the nature of {specify using common commercial name of the goods}; Bluetooth {Bluetooth is a third party
registered mark not owned by applicant (See attached U.S. Registration No. 2909356)—please specify goods using generic terms} devices; computer desksets in the nature of
{further specify e.g., laptops}; digital note recorder in the nature of a tape recorder; inverters; laptop stand; laptop riser in the nature of {further
specify e.g., Protective covers for laptop computers; electronic security locks for laptops in the nature of {further specify e.g., Electronically operated high security lock
cylinders}; micro sd cards in the nature of {further specify using common commercial or generic name of the goods}; mobile internet devices in the nature
of {specify actual device e.g., mobile phones}; computer mouse; computer keyboards; tv monitor; dvds in the nature of DVD machines and other digital recording media players
in the nature of {specify actual equipment e.g., CD players}; {Specify type of speaker e.g., audio, bass}speakers; amplifiers
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MARK DESCRIPTION REQUIRED
Applicant must submit a description of the mark, because one was not included in the application. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b). In this case, the drawing of the mark is not in standard characters.
The following description is suggested, if accurate:
The mark consists of the blue stylized wording “FINGERS” above which are two fingers outlined in blue touching the top of the letters “N” and “G”. The white background represents transparent area and is not part of the mark.
COLOR CLAIM REQUIRED
Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not provide a list of all the colors claimed as a feature of the mark, known as a color claim. Therefore, applicant must provide this required color claim. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.
The following color claim is suggested, if accurate:
“The color(s) blue is/are claimed as a feature of the mark.” TMEP §807.07(a)(i).
U.S. LICENSED COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
TELEPHONE/EMAIL FOR CLARIFICATION RECOMMENDED
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and requirements in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Collier L Johnson II/
Collier L Johnson II
Examining Attorney
Law Office 123
571-270-0878
collier.johnson@uspto.gov
RESPONSE GUIDANCE