UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87046971
MARK: VIVID
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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: Autel Intelligent Technology Corp., Ltd.
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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: 9/14/2016
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues to be Addressed by Applicant
Preliminary Matters
Applicant’s voluntary amendment dated June 27, 2016 that includes a signed verification for the application is accepted and made of record.
Section 2(d) Refusal—Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3263122 (VIVID VISION), 3599942 (VIVID) and 4420030 (VIVID-PIX). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Identical and Highly Similar Marks
Applicant’s and registrant’s marks “VIVID” are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, Llc, 116 USPQ2d 1406, 1411 (TTAB 2015). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. In re i.am.symbolic, Llc, 116 USPQ2d at 1411.
Therefore, these particular marks are confusingly similar.
Applicant’s mark “VIVID” is also highly similar to the registrants’ marks “VIVID VISION” and “VIVD-PIX” in sound, appearance and overall commercial impression. These marks all share the first and identical term “VIVID.”
Also, the terms “VISION” in Reg. No. 3263122 and “PIX” in Reg. No. 4420030 are merely descriptive because the registrants’ goods relate to sight, images, or pictures. Please see the attached dictionary definitions of “VISION,” defined as “the faculty of sight; eyesight” and “something that is or has been seen,” and “PIX,” a shortened term for “pictures.” See Exhibits 1-2 attached. Terms that are descriptive for a party’s goods—such as the terms “VISION” and “PIX” in this case— are typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Identical, Overlapping and Closely Related Goods
Furthermore, the goods of the parties are identical, overlapping, or are closely related. The applicant’s goods are “computer software for photo and video recording; downloadable cloud-based software for photo and video recording; handheld digital photo and video recording devices; video recorders; video cameras; film cameras; cameras for photography; photographic equipment stands; camera tripods; photography instruments and equipment boxes; camera balance equipment; camera viewfinders.”
The registrants’ goods include the following:
Reg. No. 3263122, “VIVID VISION”: video cameras
Reg. No. 3599942, “VIVID”: video display cards
Reg. No. 4420030, “VIVID-PIX”: computer software for processing digital images
Both applicant and the owner of the “VIVID VISION” mark offer the identical goods of “video cameras.” When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Absent restrictions in an application or registration, the identified goods are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identifications of “video cameras” set forth in the application and registration are identical and have 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. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Accordingly, the goods “video cameras” of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Next, applicant’s goods of “handheld digital photo and video recording devices,” “video recorders,” “computer software for photo and video recording” and “downloadable cloud-based software for photo and video recording” could encompass the registrants’ goods of “computer software for processing digital images” and “video cameras.” Again, the identifications set forth in the application and registrations have 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 uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in the registrant’s more narrow identifications. In sum, both applicant and the owners of the “VIVID-PIX” and “VIVID VISION” marks could provide software that performs identical functions, and identical types of video cameras.
Last, applicant’s remaining goods of “film cameras; cameras for photography; photographic equipment stands; camera tripods; photography instruments and equipment boxes; camera balance equipment; camera viewfinders” are closely related to the registrants’ photo and video-related goods because these goods are of the sort that commonly emanate from the same sources under the same marks. In support of this, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrants in this case. This evidence shows that the goods listed therein, namely, cameras and video and photography equipment, photography-related software, and video display cards, are of a kind that may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).
Finally, the examining attorney notes that where marks are identical (as in the case of applicant’s mark and the mark in Reg. No. 3599942—both “VIVID”), the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, Llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)); TMEP §1207.01(a).
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).
Since the marks are identical and highly similar, and because the goods of the parties are identical, overlapping and closely related, there is a likelihood that purchasers would confuse the sources of the goods or believe they stemmed from a single source. Accordingly, registration is refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.
Applicant must also note the following:
One Prior Pending Application
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 mark in the referenced application. 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.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below:
Identification of Goods
In particular, the wording “photography instruments and equipment boxes” and “camera balance equipment” requires further clarification. It is unclear whether the wording “photography instruments and equipment boxes” describes various photography instruments (such as photography filters, camera lenses, diffusers, etc.) and boxes specially adapted for photography equipment, or whether applicant is only providing boxes specially adapted for photography instruments and equipment. Applicant must clarify this discrepancy. Also, applicant must further clarify what its goods “camera balance equipment” encompass, e.g., camera mounts and supports, stands for photographic apparatus, etc.
Applicant must amend the wording to specify the common commercial or generic name for the goods. If the goods have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.
The examining attorney suggests, and applicant may adopt, any or all of the following identification of goods, if accurate:
“Computer software for photo and video recording; downloadable cloud-based software for photo and video recording; handheld digital photo and video recording devices; video recorders; video cameras; film cameras; cameras for photography; photographic equipment stands; camera tripods; photography instruments, namely, [specify common commercial name of goods, e.g., photography filters, camera lenses, photography filters, etc.]; boxes specially adapted for photography instruments and equipment; camera balance equipment, namely, [specify common commercial name of goods, e.g., camera mounts and supports, stands for photographic apparatus, etc.]; camera viewfinders,” in International Class 9.
TMEP §1402.01.
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.
Foreign Registration Certificate Required
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Assistance
If applicant has any questions or needs assistance in responding to this Office Action, please telephone or email the undersigned examining attorney.
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.
/Allison P. Schrody/
Examining Attorney
Law Office 115
allison.schrody@uspto.gov
(571)272-5893
(571) 273-9115 (fax)
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.