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.  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: 3/7/2017

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Registration is refused under Section 2(d) of the Trademark Act.  The refusal and any other issues raised in this Office action must be addressed within the specified time period indicated above.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Additional Fees

 

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.  Specifically, applicant failed to meet the following application filing requirement:  the identification of goods and/or services includes wording not taken from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual; and the goods and/or services were not correctly classified.

 

The additional fee is required even if applicant later corrects these application requirements.

 

Section 2(d) Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4221684 and 5066665.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

Similarity 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 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).

 

Applicant’s proposed mark is GLIMPSE.  The cited marks include the term GLIMPSE.   There is no question as to the similarity of the marks.

 

Similarity of Goods and Services

 

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

Applicant’s proposed mark is associated with various software for databasing, visualization, manipulation, virtual reality immersion and integration of geographic information with on-line member communities; software for databasing, visualization, manipulation, virtual reality and augmented reality immersion for use with training simulation, demonstration and teaching; and 3-dimentional imaging and rendering; and computer software consulting, software development consulting.  The marks in the cited registrations are used in connection with software for mobile tablet computers for creating data visualizations; and computer application software for mobile phones, portable media players, handheld computers, and desktop computers, namely, software for the uploading and real time sending and receiving of digital photos, images, data and text via a global computer network; downloadable software applications for the facilitation of communication, and the uploading and real-time sending and receiving of data in the field of social networking; downloadable software for real-time sending and receiving of data, text, photographs and images.

 

It is noted that Registration No. 4221684 includes software that also creates data visualizations as does applicant’s software.  Other wording in applicant’s identification of goods and services is stated so broadly that is could encompass or be related to the goods in applicant’s application. 

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services 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).

 

Based on the related nature of the goods/services set forth in the application and cited registrations, and the identical marks, the du Pont factors of the similarity of the marks and goods/services favor a finding of likelihood of confusion.  Accordingly, the proposed mark is refused under Section 2(d) of the Trademark Act.  Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Prior-filed Applications

 

The filing dates of pending U.S. Application Serial Nos. 86446862 and 87230633 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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.

 

Identification of Goods and Services

 

The examining attorney may require an amendment of the identification language to accurately describe the goods and services.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979). 

 

Specific wording in the identification must be clarified as indicated below.  The goods and services must be identified by their common commercial descriptions.  See 37 C.F.R. §2.32(a)(6); 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.

 

“Computer software for the databasing, visualization, manipulation, virtual reality immersion and integration of geographic information with on-line member communities; [ACCEPTABLE]

 

Virtual reality software for Virtual reality and augmented reality game software [wording “Virtual reality and augmented reality game software” does not identify the function(s) of the software as required by the ID Manual—see attached ID Manual entry];

 

 

Virtual reality and augmented reality software for entertainment and commercial use, namely, software for databasing, visualization, manipulation, virtual reality and augmented reality immersion for use with training simulation, demonstration and teaching namely, medical, occupational, professional and other teaching [wording “for use with training simulation, demonstration and teaching namely, medical, occupational, professional and other teaching” is unclear—describe the application of the software in greater details for each category, e.g., for [specify type of training] simulation for [purpose of training], for demonstration of [specify what is demonstrated], for teaching [specify what is taught] in the fields of medicine, [describe other occupational fields];

 

Computer software and applications for virtual reality purposes [wording “for virtual reality purposes” describes the purpose but not the actual function(s) of the software], consisting of 3-dimentional imaging and rendering, augmented and mixed reality and artificial intelligence applications and associated computer video and audio production and publishing [wording “consisting of 3-dimentional imaging and rendering, augmented and mixed reality and artificial intelligence applications and associated computer video and audio production and publishing” is indefinite and may identify services in another class]” – Class 9;

 

“Computer gaming consoles for recreational game playing; Controllers for game consoles; [ACCEPTABLE]

 

Hand-held units for playing electronic games in the nature of Computer hardware for use with virtual reality and augmented reality software and applications, namely, associated computer video and audio production and publishing [wording “of Computer hardware for use with virtual reality and augmented reality software and applications, namely, associated computer video and audio production and publishing” is indefinite and unclear and does not identify games as required by the Office’s ID Manual—computer hardware is not classified in Class 28];

 

Virtual reality and augmented reality devices, gear and systems for use with virtual reality and augmented reality software and applications, in the nature of handheld and other devices to control, manipulate and experience virtual reality and augmented reality software and applications and other hardware enabling computers, video game consoles, handheld game consoles, tablet computers and smart phones to provide virtual reality and augmented reality experiences {wording “Virtual reality and augmented reality devices, gear and systems for use with virtual reality and augmented reality software and applications, in the nature of handheld and other devices to control, manipulate and experience virtual reality and augmented reality software and applications and other hardware enabling computers, video game consoles, handheld game consoles, tablet computers and smart phones to provide virtual reality and augmented reality experiences” is indefinite and not taken from the Office’s ID Manual];

 

Computer [specify, electronic] cables and [specify, e.g., cable] connectors [“Computer cables and connectors” are not classified in Class 28, they are classified in Class 9]” – Class 28;

 

“Consulting services in the field of office and workplace automation; Computer software consulting; [ACCEPTABLE]

 

Software development consulting in the field of design and development of virtual reality and augmented reality software and computer game software, namely, associated computer video and audio production and publishing [wording “namely, associated computer video and audio production and publishing” is unclear and indefinite];

 

 

[specify nature of consulting] consulting services and computer programming services for others in the field [fields] of software development, configuration and management, technology consulting in the field of [specify field];

 

Computer applications and computer system integration; [ACCEPTABLE]

 

Computer software video and audio production [wording “Computer software video and audio production” is indefinite and may infer services in another class] and publishing for the development, commercialization and use of virtual reality, augmented reality, mixed reality and artificial intelligence products [wording “publishing for the development, commercialization and use of virtual reality, augmented reality, mixed reality and artificial intelligence products” is indefinite and may identify services in another class—utilize ID Manual in identifying and classifying the services]” – Class 42.

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

If applicant adds a class to the application, it must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

 

 

 

 

 

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

 

 

/Christopher Buongiorno/

Attorney

Law Office 102

(571) 272-9251

christopher.buongiorno@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 3/7/2017 FOR U.S. APPLICATION SERIAL NO. 87252072

 

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 3/7/2017 (or sooner if specified in the Office action).  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.  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 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.