UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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: 8/9/2013

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on July 8, 2013 (hereinafter, “Response”).

 

The previous Office Action of January 9, 2103, and all supporting evidence attached thereto, is incorporated by reference herein. 

 

After review of the Response, the following is determined:

• the refusal to register on the ground of likelihood of confusion with the mark in U.S. Registration No. 3270693 is MAINTAined and made FINAL; and
• the proposed amendment to the identification of goods is accepted and will be entered into the record.

 

Refusal made final

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3270693.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

Section 2(d) likelihood of confusion refusal

 

This partial refusal applies only to the goods specified therein

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3270693.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously enclosed registration.

 

I.  2(d) Standard of Review

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

II.  Application of the 2(d) Standard of Review

 

The cited registration at Registration No. 3270693 is the mark FRED for the following goods: “Computer hardware, computer peripherals, and computer programs for use in tracking and inputting point of sale data for use in the food service industry”.

 

The applied for mark is FRED for “Cell phone cases; Plastic molded support base specially adapted to prop up laptop computers; Stands for handheld digital electronic devices, namely, stands for handheld computers and mp3 players; Computer stylus; Audio speakers; Mechanical timers; Measuring cups; Measuring spoons; Refrigerator magnets,” as amended.  This refusal is limited to the following goods only: “Plastic molded support base specially adapted to prop up laptop computers; Stands for handheld digital electronic devices, namely, stands for handheld computers and mp3 players; Computer stylus; Audio speakers”.

 

A.  Comparison of Sound, Appearance and Meaning

 

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).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

The applied for mark and cited registered mark are identical, and therefore look the same, are pronounced the same, and have the same meaning and commercial impression.

 

B.  Comparison of Goods

 

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).

 

The goods identified in the cited registered mark are for “Computer hardware, computer peripherals, and computer programs for use in tracking and inputting point of sale data for use in the food service industry”.

 

The goods identified in the application (as amended) include “Plastic molded support base specially adapted to prop up laptop computers; Stands for handheld digital electronic devices, namely, stands for handheld computers and mp3 players; Computer stylus; Audio speakers”. 

 

Consumers are likely to confuse the source of the goods for the applied for mark and cited registration because the goods of the applied for mark and the cited registration are at a minimum, related, and could be overlapping.  Specifically, applicant’s goods “Plastic molded support base specially adapted to prop up laptop computers; Stands for handheld digital electronic devices, namely, stands for handheld computers and mp3 players; Computer stylus; Audio speakers” are goods that may be used with computers and are therefore related to registrant’s “computer hardware” goods, and are encompassed by registrant’s “computer peripherals” goods.  TMEP §1207.01(a)(iii).

 

See the previously attached online technology dictionary (http://www.techterms.com/definition/hardware) and online dictionary (http://education.yahoo.com/reference/dictionary/entry/hardware) definitions showing that computer “hardware” refers to the physical equipment of computers.  See also the previously attached online dictionary (http://education.yahoo.com/reference/dictionary/entry/peripheral) and online technology dictionary definitions (http://www.techterms.com/definition/hardware) showing that a “peripheral” is an extra device used with a computer.

 

See the previously attached website evidence (http://reviews.cnet.com/computer-peripherals/?filter=500218_5000186_ and http://www.engadget.com/2012/05/25/insert-coin-pressurepen-stylus-lets-you-make-all-kinds-of-lines/ ) showing that a computer stylus is a type of computer peripheral. 

 

And see the attached website screenshots showing some of applicant’s computer peripherals, computer supports, and computer stands – all of which are clearly goods used in connection with computer hardware:

• the crayon-like computer stylus, used “to interact with the screen on your phone or tablet”;
• the match-like computer stylus for “drawing or stylishly tapping out texts on your touch-sensitive device”; and
• the bubble-gum like laptop supports which are used to elevate a laptop.

 

See also the previously attached online encyclopedia evidence (http://simple.wikipedia.org/wiki/Peripheral_equipment ) showing that audio speakers are a type of computer peripheral.  Indeed, applicant’s specimen of use shows the applied for mark appearing on a package of audio speakers that are advertised as “for your computer”.

 

Furthermore, as the goods of the applied for mark and the cited registration are related and possibly overlapping, they may travel within the same channels of trade.

 

C.  Summary of 2(d) review

 

The applied for mark is confusingly similar to the cited registered mark because the marks are identical.  Because the marks are confusingly similar and because the goods are related and/or travel within the same channels of trade, the applicant’s mark is refused on grounds of likelihood of confusion.

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

Applicant argues that its identified goods are sufficiently different from those of registrant, and travel in different channels of trade, such that consumers would not be likely to confuse the source of applicant’s and registrant’s goods.  The crux of applicant’s argument is that its goods are “humorous accessories” for use with computers and other devices, but are not computer hardware goods or computer peripheral goods.  Applicant provided example images of its products to support this argument. 

 

While applicant’s goods do not appear to be computer hardware goods, they are intended for use with computer hardware goods, and as such are considered related items.  Use of the identical mark on a computer and on goods used in connection with computers, such as applicant’s support stands, would likely cause consumers to mistakenly believe that both such products derived from the same source. 

 

Furthermore, applicant’s computer stylus and audio speakers goods are computer peripherals goods by definition and common use of the meaning of that terminology, and consumers would understand such goods to be computer peripherals.  As such, applicant’s styli and audio speakers are encompassed by registrant’s identified computer peripherals goods, and use of the identical mark by applicant and registrant on such goods would likely confuse consumers as to the source of such goods.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Finally, applicant argues that the applied-for mark FRED exists “in a crowded field of marks” such that applicant’s and registrant’s goods could co-exists without likely causing consumer confusion as to the source of these goods.  Applicant supports this assertion by pointing to one registration for computer software offered under a FRED mark.  A field comprised of two registered marks, the cited mark and another, is insufficient to create a “crowded field of marks”, but rather appears to illustrate standard Office practice of allowing computer software goods with different functions and/or fields of use to coexist.  The existence of the FRED mark for computer software which applicant provided does not lessen the likelihood of consumer confusion as to applicant’s and registrant’s related and overlapping goods, especially in light of the identical marks under which the goods are marketed.

 

Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods and/or services need not be as close to support a finding of likelihood of confusion.  See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

 

For the above stated reasons, the Trademark Act Section 2(d) refusal is FINAL.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Response to final action

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final refusal applies will be deleted from the application by Examiner’s Amendment:  “Plastic molded support base specially adapted to prop up laptop computers; Stands for handheld digital electronic devices, namely, stands for handheld computers and mp3 players; Computer stylus; Audio speakers”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods:  “Cell phone cases; Mechanical timers; Measuring cups; Measuring spoons; Refrigerator magnets”. 

 

Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements;

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Kaelie E. Kung/

Kaelie E. Kung

Examining Attorney

Law Office 103

(571) 272-8265

kaelie.kung@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/9/2013 FOR U.S. APPLICATION SERIAL NO. 85734795

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 8/9/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.