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: 7/5/2016

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on June 14, 2016.

 

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. 4434584.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  In addition, the following requirement is now made FINAL:  acceptable clarification of the identification of goods.  See37 C.F.R. §2.63(b).

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 4434584.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, 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 at 1355, 98 USPQ2d at 1260; 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.

 

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).

 

The applicant is applying to register the mark  SMARTQ in standard characters in connection with “Computers; MP4 players; PC tablets; Tablet computer; Portable media players; Portable telephones; Mobile Internet devices (MID); Wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, and display screens and also featuring a wristwatch; and Parts and accessories thereof, namely, computer cables, protective cases for the wearable electronic device featuring the wristwatch, capacitive styluses for touch screen devices, battery chargers, memory cards; Electronic navigational instruments; GPS navigation device; Digital book readers; Computer software for page recognition and rendering for use in viewing, printing, navigating, editing, annotating and indexing electronic documents, and transferring electronic documents via a local or global communications network” (as amended)

 

The cited mark in Registration No. 4434584 is SMART Q in standard characters for “Telephone sets; Wireless Telephone sets; Portable communications apparatus, namely, Handsets, Walkie-Talkies, Satellite Telephones and Personal Digital Assistants; Mobile phones; MPEG audio layer-3 players; Television receivers; Television remote controllers; Encoded electronic chip cards for improvement of television image quality; Universal Serial Bus drives; Digital Media Broadcasting players; Headsets for mobile phones; Portable Chargers for mobile phone batteries and digital camera batteries; Electronic Photo Albums; Digital Picture Frames for displaying digital pictures, video clips and music; Monitors for computer; Laptop computers; Computers; Digital Versatile Disc players; Portable hard disk drives; Apparatus for recording, transmission or reproduction of sound or images for use in telecommunications; Apparatus for recording, transmission or reproduction of sound or images; Electric audio and visual apparatus and instruments, namely, audio and video cassette recorders, audio recorders, video tape recorders, or audio-video receivers; Stereos; Computer software for mobile phone, namely, for mobile phone operating systems, sending and receiving information, to provide web-based access to applications, products and services; Computer application software for television, namely, software for setting-up and calibrating television receivers; Computer application software for personal computer monitors, namely, software for setting-up and calibrating personal computer monitors; Digital Versatile Disc players for home theaters; Speakers for home theaters; Audio-Video receivers for home theaters; Projectors for home theaters; Integrated circuits; Audio Receivers; On Board electronic vehicle units and Electronic smart cards for payment of tolls on the highway; Transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions; Closed-Circuit Television Cameras; Network monitoring cameras, namely, for surveillance. Electronic displays, namely, digital signage; Thermal printers; Digital colour printers; Laser printers; Ink jet printers; Colour printers; Printers for use with computers; Solar batteries; Personal Computer Cameras; Digital voice recorders; Videocassette recorders; Network monitors; Electronic Notepads; Tablet computers; Interactive electronic white board computers; Settop boxes; Downloadable image files accessible via the Internet; Electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics; Video conference system comprising, monitors, video cameras and audio speakers; Monitors for video conference; Cameras for video conference; Speakers for video conference; Three dimensional eyeglasses for television receivers; DNA chips; Dosage dispensers, namely, machines for dispensing pre-determined dosages of medication; Oxygen transvasing apparatus, namely, oxygen regulators; Incubators for bacteria culture; Laboratory equipment and supplies, namely, test tubes; Food analysis apparatus, namely, diagnostic apparatus for testing food; Physical and chemical laboratory apparatus and instruments, namely, laboratory chemical reactors, beakers, gas mixers for laboratory use; Apparatus and instruments for physics, namely, wavemeters; Apparatus for automatic chromatography; Magnetic agitators for laboratory use; Pipettes; Chemistry apparatus and instruments, namely, flasks, gas mixers, laboratory chemical reactors; Computer software for dosimetry purposes in the field of radiotherapy; Computer software for managing medical data for medical purposes; Biochips for research or scientific purposes; Cell chips, namely, DNA chips; Analysis apparatus for cell chips, namely, chip card readers, optical readers; Diagnostic chips for medical purposes, namely, biochips; Computer software for diseases diagnostics for medical purposes; Computer software for developing, management of electronic charts for medical purposes”

 

ARGUMENT

 

The applicant argues that there is no likelihood of confusion because (1) the registrants goods cover refrigerators, lamps, water filters, televisions, vibrating machines, diagnostic equipment and air conditioning equipment” none of which have any relation to the applicant’s goods.  In addition, applicant infers that no use of the mark is evident.  The examining attorney respectfully disagrees with these arguments.   

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, 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). 

 

 

 

In the present case, applicant’s mark is SMARTQ and registrant’s mark is SMART Q.  Thus, the marks are identical in terms of appearance and sound with the exception of the deletion of the space between “smart” and “q” in the applicant’s mark.  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 the Goods

 

In addition to the marks being virtually identical, the goods are the same and also highly related.  The applicant is correct in noting that refrigerators, lamps, etc. are not related to its goods (thus, such goods were not included in the likelihood of confusion refusal).  However, applicant’s goods are the same as, as well as highly related, to the Class 009 goods in the cited mark.  Specifically, the applicant and registrant provide telephones, various types of computers, apparatus for transmission and reproduction of sound or images and computer software for sending and receiving information.  

 

The applicant has stated that there is no evidence of use of the mark.  However, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

Thus, arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

Therefore, given the virtually identical nature of the marks, and the identical and related nature of the goods, consumers are likely to reach the conclusion that the goods are related and originate from a common source.  As such, the refusal to register under Section 2(d) of the Trademark Act is made FINAL.

 

Clarification of the Identification of Goods

 

In the Office Action dated December 14, 2015, the examining attorney required the applicant to clarify and amend the goods in the application and the applicant responded with an amended Identification of Goods.  The proposed amendments with respect to the identification of goods cannot be accepted because some of the wording remains indefinite and requires further clarification.  Specifically, applicant must indicate if the memory cards are blank or pre-recorded. If the memory cards are prerecorded, applicant must indicate the subject matter contained therein.

 

The proposed amended identification of goods is as follows:

 

Computers; MP4 players; PC tablets; Tablet computer; Portable media players; Portable telephones; Mobile Internet devices (MID); Wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, and display screens and also featuring a wristwatch; and Parts and accessories thereof, namely, computer cables, protective cases for the wearable electronic device featuring the wristwatch, capacitive styluses for touch screen devices, battery chargers, memory cards; Electronic navigational instruments; GPS navigation device; Digital book readers; Computer software for page recognition and rendering for use in viewing, printing, navigating, editing, annotating and indexing electronic documents, and transferring electronic documents via a local or global communications network

 

Applicant may consider the following:

 

Computers; MP4 players; PC tablets; Tablet computer; Portable media players; Portable telephones; Mobile Internet devices (MID); Wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, and display screens and also featuring a wristwatch; and Parts and accessories thereof, namely, computer cables, protective cases for the wearable electronic device featuring the wristwatch, capacitive styluses for touch screen devices, battery chargers, BLANK FLASH memory cards; Electronic navigational instruments; GPS navigation device; Digital book readers; Computer software for page recognition and rendering for use in viewing, printing, navigating, editing, annotating and indexing electronic documents, and transferring electronic documents via a local or global communications network

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

PROPER RESPONSE TO FINAL REFUSAL

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(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. 

 

 

 

/CarynGlasser/

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@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 7/5/2016 FOR U.S. APPLICATION SERIAL NO. 86736550

 

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 7/5/2016 (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.