To: | Apple Inc. (trademarkdocket@apple.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86868731 - LIVE PHOTOS - N/A |
Sent: | 2/1/2017 10:20:17 AM |
Sent As: | ECOM103@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 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86868731
MARK: LIVE PHOTOS
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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: Apple 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 2/1/2017
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communications filed on October 5, 2016 and October 12, 2016.
In a previous Office action(s) dated April 5, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following: (1) Trademark Act Section 2(d) for a likelihood of confusion with a registered mark; and, (2) Section 2(e)(1) – Mere descriptiveness of the mark.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: Section 2(e)(1) – Mere descriptiveness of the mark. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney MAINTAINS and now makes FINAL the Section 2(d) refusal as set forth below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied for the mark “LIVE PHOTOS” in standard character form, with “PHOTOS” disclaimed, in International Class 9 for: “Computer software for recording and displaying images, video and sound.”
Registrant has the mark “HP LIVE PHOTO” in standard character from, with “PHOTO” disclaimed in International Class 9 for: “Software application that enables mobile device users to scan or link a printed photograph or document which triggers a digital experience.”
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.
Comparison of the 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 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 only difference in spelling is applicant’s addition of the pluralizing letter “S” at the end. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
Furthermore, adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar. Here, the “HP” house mark appended to registrant’s mark fails to distinguish the two as consumers encountering applicant’s mark would not be aware of the source, (HP or Apple), that the goods originate from.
The marks share common root wording which differs only in a singular versus plural capacity. This creates similarities in sound and appearance. The addition of the “HP” house mark in registrant’s mark also fails to distinguish the marks as consumers are likely to believe applicant’s goods also originate from registrant. The result is that the marks carry an overall similar commercial impression. Therefore, the marks are similar for purposes of Section 2(d).
Comparison of the Goods
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).
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) broad wording to describe the goods, namely, software for recording and displaying images, sound and video, and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification for mobile device software that users can capture images with through scanning or linking as well as being able to display images in a “digital experience.” The examining attorney incorporates by reference the evidence from the prior Office action and attaches additional evidence herein further demonstrating applicant’s encompassment as both goods involve the use of displaying an image, which can include a photograph,” (see: http://www.collinsdictionary.com/us/dictionary/english/photograph). See also: http://www.pcworld.com/article/2030046/hp-live-photo-app-turns-photo-prints-into-augmented-reality-videos.html, (describing the digital experience aspect of registrant’s goods which include the display of a video derived from a user’s digitally captured photograph); http://www.imore.com/how-take-and-share-live-photos-iphone-ipad and http://www.macrumors.com/how-to/live-photos-iphone-6s/, (discussing applicant’s software and its digital experience which includes capturing an image as well as displaying an image).
Material obtained from the Internet is generally accepted as competent evidence in trademark examination. See In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008); TBMP §1208.03; TMEP §710.01(b).
Applicant argues that there is no likelihood of confusion between the marks because registrant’s main “flagship products” are printers and scanners. Applicant’s argument is respectfully unpersuasive. Registrant’s goods at issue in this Section 2(d) comparison are software goods, not printers or scanners. That registrant sells these goods is immaterial. As set forth above, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration, not upon unlisted goods.
Applicant has also submitted a consent agreement. Upon review, the consent agreement between applicant and registrant is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public. See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii). Without additional factors to support the conclusion that confusion is unlikely, naked consents are generally accorded little weight in a likelihood of confusion determination. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973). Additionally, the consent agreement make representations about the beliefs of both sides, however, it is only signed by registrant, which under the circumstances specific to this matter lessens the agreement’s persuasive value. In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1956-57 (TTAB 1994); TMEP §1207.01(d)(viii).
If applicant submits a more “clothed” consent agreement indicating the registrant’s consent to the use and registration of the mark, and addressing one or both of the factors listed above, this refusal will be reconsidered. However, consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination. In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016) (“[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.”).
Factors to be considered in weighing a consent agreement include the following:
(1) Whether the consent shows an agreement between both parties;
(2) Whether the agreement includes a clear indication that the goods travel in separate trade channels;
(3) Whether the parties agree to restrict their fields of use;
(4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
(5) Whether the marks have been used for a period of time without evidence of actual confusion.
See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).
The cumulative evidence in the record establishes an encompassed relationship between applicant’s goods and registrant’s goods and applicant’s arguments in favor of registration, along with its submitted consent agreement lack sufficient details and persuasive value that would overcome the refusal. Therefore, the software goods underlying both marks are similar for purposes of Section 2(d).
Conclusion
In sum, the marks share close similarities in sound, appearance and overall commercial impression. The marks share the same root wording which differs only in a singular versus plural form. Registrant’s house mark fails to distinguish the marks in this instance as consumers encountering them are likely to believe that they originated from the same source and not from two different entities. The goods of applicant are similar to those of registrant by way of encompassment as established by the cumulative evidence. Applicant’s argument against the refusal based upon registrant’s other popular goods is unpersuasive as it involves goods that are not set forth in registrant’s identification. Additionally, applicant’s submitted consent agreement is a naked consent and fails to contain enough details about how the parties have come to believe that there is no likelihood of confusion nor are there sufficient details about what steps the parties will take should confusion in the marketplace arise. The agreement is also not signed by both parties which in this matter as the agreement makes representations about the beliefs of Apple and Hewlett-Packard. Additionally, the close similarities between the marks acts to mitigate differences there are between the underlying goods. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Taking all of these factors into account, consumers encountering both marks together in the marketplace are likely to incur confusion as to source. Therefore, the refusal to register the applied-for mark under Section 2(d) of the Trademark Act is hereby made FINAL.
RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 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). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
TRADEMARK FEES: Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper. See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7). Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements. Id. Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees. See more information for an overview of the changes. See the fee chart that lists all trademark fee changes.
/Robert Andrew Cohen/
Trademark Examining Attorney
Law Office 103
(571) 270-1389
robert.cohen@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.