To: | Lifespeed, Inc. (coleb@perkinscoie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86446862 - GLIMPSE - 115363-4003. |
Sent: | 12/29/2014 8:18:25 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86446862
MARK: GLIMPSE
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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: Lifespeed, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 12/29/2014
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Applicant should note the following refusal.
Registration Refused – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark GLYMPSE in U.S. Registration No. 4380085, the mark GLIMPSE in U.S. Registration No. 4221684 and the mark GLYMPSE in U.S. Registration No. 3648664. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
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.
Comparison of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
The mark in U.S. Registration No. 4380085 is GLYMPSE in stylized form. The mark in U.S. Registration No. 3648664 is GLYMPSE. Applicant’s mark is GLIMPSE. Although the registered marks feature slight misspellings in the form of the letter “Y” in place of the letter “I”, the marks are otherwise identical in commercial impression. Moreover, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv).
In the present case, applicant’s mark is GLIMPSE and the mark in Reg. No. 4221684 is GLIMPSE. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
Comparison of Goods
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).
The goods in Reg. No. 4380085 are “Computer software for tracking location using GPS data”. The goods in Reg. No. 4221684 are “Software for mobile tablet computers for creating data visualizations”. The goods in Reg. No. 3648664 are “Downloadable software for identifying, tracking, or calculating information for determining a user's location all used to provide location, proximity and logistics information via telecommunication networks, cellular telephones and wireless navigation devices”. Applicant’s goods include the broad and unrestricted wording “computer software” in Class 9. Because the goods do not include any specific purpose, they presumably include the registrants’ more narrowly identified software functions.
Applicant’s mark is nearly identical to the registrants’ marks and is intended for use in connection with goods that are highly related to the registrants’ goods, thereby making confusion as to the source of the goods likely. Accordingly, registration is refused under Trademark Act Section 2(d).
Potentially Conflicting Applications May Present Bar to Registration
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 86169207, 86012133 and 86012131. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
Identification of Goods Must be Amended
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
For the applicant’s convenience, the trademark examining attorney suggests an amendment of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with any material additions and deletions highlighted in bold and italicized type. Applicant may adopt the following identification, if accurate:
International Class 9: “Computer software for use in database management; computer software for uploading, manipulating, and enhancing digital content, documents, photographs, and images; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for users to electronically manage, process and share health data with physicians, providers, and emergency responders; computer and network servers; downloadable medical data via the Internet; viewing devices, namely, digital photograph viewers, 3D digital photograph viewers; computer hardware and software for medical imaging apparatus; virtual reality software for viewing, organizing, modifying, and editing data and images; augmented reality software for viewing, organizing, modifying, and editing data and images; computer hardware; computer software for [specify purpose]”
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Proper Classification Required
Partial Abandonment Advisory
If applicant does not respond to this Office action within the six-month period for response, International Class(es) 9 and 39 will be deleted from the application. The application will then proceed with International Class 38 only. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
/Julie Thomas Veppumthara/
Trademark Examining Attorney
Law Office 107
Phone: 571-272-1582
Email: julie.veppumthara@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.