To: | VMware, Inc. (baugust@pattishall.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86601535 - PHOTON - 02217-00145 |
Sent: | 2/29/2016 10:56:09 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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86601535
MARK: PHOTON
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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: VMware, 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: 2/29/2016
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on 12/9/15.
In a previous Office action dated 7/15/15, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
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. 4681513. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously enclosed registration.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. 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.
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 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
The applicant’s mark “PHOTON” and design is likely to be confused with the registered mark “PHOTON” in standard characters.
In this case, the two marks share the identical term “PHOTON.” Applicant’s mark adds a design element to its mark. However, this design element is not sufficient to distinguish the mark from that of the registrant, because it does not alter the commercial impression created by the mark when considered together with the applied-for goods. Moreover, the consumer would still refer to the applicant by the word element, PHOTON, which the applicant’s mark shares with the registrant’s mark.
Therefore, the marks are confusingly similar.
Comparing the Goods
The applicant’s goods as amended are “Downloadable computer operating system software for use with virtualized software containers and cloud-hosted software applications, excluding computer software for development, operation and publication of connected multiplayer video games,” in Class 9. (Emphasis added). See application.
The registrant’s goods are “Computer software for development, operation, and publication of connected applications, including multiplayer video games, on any computerized platform, including personal computers, dedicated gaming consoles, hand held devices and mobile phones,” also in Class 9, and other services not at issue. (Emphasis added). See the previously attached registration.
The respective goods 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] 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).
In this case, both the applicant’s and registrant’s goods are to be used with software applications. Cited registrant’s goods indicate that they are to be used with “any computerized platform,” which encompasses the use of applicant’s identified goods, namely, “virtualized software containers and cloud-hosted software applications.” Additionally, the language that specifies the function of the software in the applicant’s identification, “for use with,” is broad enough to encompass the more narrow language used in the registrant’s identification, “for development, operation, and publication.”
The attached evidence consists of screenshots from the following websites that indicate that the same entity provides both software for application development and operating software for cloud-based applications under the same mark.
Applicant’s Arguments
In the response dated 12/9/15, the applicant provided an amendment to the identification of goods which excluded some of the goods contemplated by the registrant’s identified goods. However, this amendment does not obviate the likelihood of confusion that exists between the applicant’s and registrant’s marks.
As an initial matter, the applicant’s and registrant’s marks are identical. Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods 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 House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); TMEP §1207.01(a).
Further, although the registrant’s identified goods identify with specificity some of the potential applications for the registrant’s software, specifically, “multiplayer video games,” the identification of goods uses the term “including” preceding this specific use. Therefore, the registrant’s mark is not limited to only “computer software for development, operation, and publication of connected applications, including multiplayer video games.” The applicant’s identification also encompasses computer software for the operation of cloud-hosted applications.
While applicant is correct that “simply because applicant’s goods and the registrant’s goods both involve software does not mean they are related for the purposes of determining the likelihood of confusion between them,” in this case, the function, purpose, and nature of the software goods identified by both the applicant and registrant are sufficiently related that confusion is likely to exist.
Applicant’s extrinsic evidence is also insufficient to demonstrate the perceived distinctions between the applicant’s and registrant’s goods. The question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Applicant’s arguments with respect to the sophistication of potential purchasers are also unpersuasive. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). In a situation with identical marks and related goods, even sophisticated purchasers may be confused as to the source of particular goods, even if they would not confuse the goods themselves.
Conclusion
In this case, the mark of the applicant and registrant are identical, and the goods of the applicant and registrant are confusingly similar in that the registrant’s identification encompasses the goods of the applicant. Accordingly, the refusal to register applicant’s proposed mark, PHOTON, is made FINAL under Trademark Act Section 2(d).
RESPONSE TO FINAL OFFICE ACTION
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); 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. 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).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Diane Collopy/
/Diane Collopy/
Examining Attorney
Law Office 107
diane.collopy@uspto.gov (informal communications only)
(571) 270-3118
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.