UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85505668
MARK: SENSATION
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Monster, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 4/5/2012
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
A likelihood of confusion determination in this case involves a two-part analysis. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). First, the marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). Then the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
Similarity of the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression. 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).
The applicant’s mark SENSATION is similar to the registered marks SENSATION WHITE, SENSATION with DESIGN, and HTC SENSATION (two marks) because the dominant feature in each of the marks is the word SENSATION. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
The additional wording and design elements in the registered marks do not change the finding of similarity. First, in Registration Nos. 4100121 and 4100120, the additional element HTC is a house mark. When marks are otherwise virtually the same, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks; it is likely that the two products sold under such marks would be attributed to the same source. In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE STIC for general purpose adhesive in stick form likely to be confused with UHU GLU STIC for adhesives for paper and stationery); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982) (holding SKIN SAVERS for face and throat lotion likely to be confused with MENNEN SKIN SAVER for hand and body lotion); see Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d 662, 663, 143 USPQ 237, 238 (C.C.P.A. 1964) (holding HAMMERMILL E-Z CARRY PAK and E-Z PAPER PAK for carrying cases or boxes for typewriter or duplicator paper likely to be confused with E-Z PAK and E-Z CARI for paper bags); TMEP §1207.01(b)(iii).
In Registration No. 3476744, the additional term “WHITE” merely suggests a particular version of “SENSATION” goods, such as those that are white in color. In this mark, it is still SENSATION that conveys the greatest trademark significance. SENSATION is similarly the dominant element in Registration No. 3761408, as the design element in that mark is a relatively minor geometric shape that does not change the overall impression of the mark. Moreover, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services; therefore, the word portion is normally accorded greater weight in determining whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).
The applicant’s mark is the single term SENSATION. As discussed above, the dominant feature in each of the registered marks is also the single term SENSATION. Thus, the applicant’s mark is confusingly similar to each of the registered marks.
Relatedness of the Goods/Services
That is the case here. The applicant seeks to register the proposed mark for use on “audio speakers, electronic docking stations, headphones” and the registered marks are used, in relevant part, on cellular phones, cell phone accessories including headsets and battery chargers, and apparatus for the transmission or reproduction of sound. The applicant’s goods are related to the goods listed in the registrations, as the purpose and function of the applicant’s goods is the same as or similar to the purpose of the registered goods. In addition, the applicant’s goods include those that are commonly provided under the same mark as goods listed in the cited registrations.
Registration Nos. 3476744 and 3761408
The goods in Registration Nos. 3476744 and 3761408 include “apparatus for recording, transmission or reproduction of sound and images.” These goods are related to the applicant’s audio speakers and headphones, as audio speakers and headphones are each an apparatus for the transmission or reproduction of sound.
In this case, the identification in the cited registrations uses broad wording to describe the registrant’s goods and does not contain any limitations as to nature, type, channels of trade or classes of purchasers. Therefore, it is presumed that the registration encompasses all goods of the type described, including those in applicant’s more specific identification, that the goods move in all normal channels of trade, and that they are available to all potential customers. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii). Thus, the goods are considered related for likelihood of confusion purposes.
Registration Nos. 4100120 and 4100121
The goods in Reg. No. 4100121 include mobile phones, smart phones, and cellular phones. The goods in Reg. No. 4100120 include, in relevant part, accessories for use with cellular and mobile phones, including headsets, battery chargers, cradles, and connection cables. These goods are related to the goods of the applicant because the applicant’s goods are or could be used as cellular phone accessories. In addition, the goods are of a type commonly provided by a single entity under the same mark, and that travel in the same channels of trade.
First, the applicant’s “audio speakers” and “electronic docking stations” are identified broadly, as the specific purpose of the goods is not listed. Such speakers and docking stations could be used as mobile telephone accessories. The examining attorney references the attached shopping pages from www.google.com which show for sale docking stations and audio speakers intended for use with mobile phones. Further, as such goods are used as mobile phone accessories, they are related to items such as battery chargers, connection cables, and the like, which are also intended for use with cellular phones.
In addition, headsets and headphones are related goods, as they perform a similar function. The examining attorney references the attached “Headset” entry from www.wikipedia.org, which explains that a headset is comprised of headphones and a microphone. In essence, headsets are headphones for use with wireless phones, which headphones also include a microphone so that users can participate in telephone conversations through the headset.
As discussed above, the applicant’s goods may be used with the goods of the registrant, and include items that perform the same function as those of the registrant. As the goods are used for complementary purposes and perform similar functions, they are commonly provided by a single entity under the same mark.
Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely speakers, headphones, and electronic docking stations and cellular phones, mobile phones, headsets, battery chargers, and other cellular phone accessories, are of a kind that may emanate from a single source. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
The examining attorney additionally references the attached web pages, obtained via an Internet search using the Google® search engine, which further show the relatedness of the parties’ goods. As shown in the web pages, it is not uncommon for a single manufacturer to produce mobile phones and accessories for mobile phones such as speakers, docking stations, and/or headphones. Headphones and headsets are also commonly produced under a single mark. For example, the attached pages from www.bose.com and www.shure.com are shopping and information pages for entities that provide both standard headphones and headphones with microphones, or headsets. The attached pages from www.motorola.com and www.samsung.com show that those manufacturers produce mobile phones and mobile phone accessories in the nature of docking stations.
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
The applicant’s mark is similar to the registered marks, as the applicant’s mark is comprised entirely of the dominant feature in each of the registered marks. The goods of the parties are related, as the applicant’s goods are encompassed within goods listed in some registrations and are used with or perform the same functions as goods listed in the other registrations. Accordingly, there would be a likelihood of confusion as to the source of the goods. Therefore, registration of the applicant’s mark is refused under Trademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration Nos. 3476744, 3761408, 4100120, and 4100121.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
/Kimberly Frye/
Trademark Examining Attorney
Law Office 113
(571) 272-9430 (phone)
(571) 273-9430 (fax)
E-mail: kimberly.frye@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.
