| To: | GLANCE INMOBI PTE. LTD. (jrobinson@robinsonlawpllc.com) |
| Subject: | U.S. Trademark Application Serial No. 87393652 - GLANCE - N/A |
| Sent: | January 04, 2021 06:09:36 PM |
| Sent As: | ecom125@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 87393652
Mark: GLANCE
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Correspondence Address:
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Applicant: GLANCE INMOBI PTE. LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 04, 2021
This Office action is in response to applicant’s communication filed on November 20, 2020.
In a previous Office actions dated June 30, 2017 and February 5, 2018, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with two registered marks. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and/or services and satisfy related multiple class issues, and to provide a copy of the foreign registration.
Based on applicant’s response, the trademark examining attorney notes only the multiple class requirement was satisfied. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04. All previous evidence and arguments, where applicable, are incorporated by reference herein.
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 marks in U.S. Registration Nos. 3290678 and 5237036. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
COMPARISON OF MARKS
Applicant’s mark is “GLANCE” in stylized lettering in International Classes 9, 35, 41, and 42, as amended.
Registrant’s marks are:
U.S. Registration No. 3290678, “GLANCE” in standard characters in International Classes 9 and 42.
U.S. Registration No. 5237036, “GLANCE” with design in International Classes 9 and 42.
In the present case, the wording in applicant’s mark is GLANCE and registrant’s marks is GLANCE. These marks are identical or nearly 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), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). 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 and/or services. Id.
The addition of stylization in the applied-for mark does not obviate the refusal with registrant’s mark GLANCE in standard characters (Reg. No. 3290678). A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Additionally, the stylization in the applied-for mark and design element in registrant’s mark (Reg. No. 3290678) does not obviate the refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
As a result, the marks are confusingly similar.
COMPARISON OF GOODS AND SERVICES
The applicant’s goods and services, as amended, are identified as:
Class 9: Computer software, namely, machine learning and cognitive computing software for use in capturing, processing, editing, viewing, sharing, recognizing, and tagging digital photos, digital videos and images; computer software, namely, machine learning and cognitive computing software for use in providing user-specific content recommendations, sponsored advertisements and semantic interpretations related to digital photos, digital videos and images; Downloadable mobile applications for users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use
Class 35: Providing a website for users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use; Advertising, marketing and promotional services using an online mobile network. Promotional services, namely, promotion relating to multimedia content, particularly audio, video and image content
Class 41: Providing a webpage featuring recommendation of digital content, namely, audio, video and images in the field of entertainment and education; Entertainment services, namely, providing advice and information for multimedia entertainment content, namely, audio, video, and image production services; Informational content provision services, namely, multimedia production services, software production services, providing an online interactive database of photos and videos in the field of fashion, lifestyle, culture and events
Class 42: Providing temporary use of non-downloadable web applications for users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use
The registrant’s goods and services are identified as the following in both registrations:
Class 9: Computer software for enabling users to remotely view other user on-screen applications via the Internet; Computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions” in International
Class 42: Providing temporary use of non-downloadable computer software for enabling users to remotely view other user on-screen applications via the Internet
The previously attached Internet evidence, consisting of screenshots from the following websites
http://www.totalrecorder.com (provides software to record and transmit digital audio),
http://www.movavi.com/ (provides software to capture video and “Export videos in any popular format”),
http://www.pinnaclesys.com (provides software to capture, edit, and share and transfer videos),
http://www.domo.com (provides software to “capitalize on the new digital marketplace and connected consumer, media and entertainment leaders require accessible, real-time and reliable
data”),
http://www.tableau.com (provides software to track consumer behavior and data),
http://www.ibm.com (provides consumer data and behavior software),
http://www.sap.com (provides consumer data and behavior software),
http://www.surfly.com (provides co-browsing software and software for transferring documents and information, “Use Surfly to deliver expert and personalized information.”; “Coupled with text, audio and video chat, you can start connecting with customers in a more personalized manner.”),
http://www.verishow.com (provides co-browsing software for educational and advertising purposes, “Show instructional videos, help remote students collaborate on class projects, and provide one-on-one guidance to distant learners with VeriShow’s real-time multi-media platform for website interactions”), and
http://www.prysm.com (provides co-browsing software that allows for an interaction of multimedia content via the Internet or an application, “Participants from up to 25 locations can simultaneously interact with the content”)
Establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark, and the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.
Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
SUMMARY
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).
In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective goods and/or services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods and/or services originate from a common source.
Accordingly, registration must be refused and made FINAL under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
CLARIFY IDENTIFICATION OF GOODS AND SERVICES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
The wording “applications for users with specific informed recommendations” in the identification of “Downloadable mobile applications for users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use” in International Class 9 and “Providing temporary use of non-downloadable web applications for users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use” in International Class 42 is indefinite and must be clarified because it does not provide a function for the applications. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may adopt the following identification, if accurate (examining attorney’s suggestions in bold font):
Class 9: Computer software, namely, machine learning and cognitive computing software for use in capturing, processing, editing, viewing, sharing, recognizing, and tagging digital photos, digital videos and images; computer software, namely, machine learning and cognitive computing software for use in providing user-specific content recommendations, sponsored advertisements and semantic interpretations related to digital photos, digital videos and images; Downloadable mobile applications for providing users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use
Class 35: Providing a website for users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use; Advertising, marketing and promotional services using an online mobile network; Promotional services, namely, promotion relating to multimedia content, particularly audio, video and image content
Class 41: Providing a webpage featuring recommendation of digital content, namely, audio, video and images in the field of entertainment and education; Entertainment services, namely, providing advice and information for multimedia entertainment content, namely, audio, video, and image production services; Informational content provision services, namely, multimedia production services, software production services, providing an online interactive database of photos and videos in the field of fashion, lifestyle, culture and events
Class 42: Providing temporary use of non-downloadable web applications for providing users with specific informed recommendations in the field of online audio, video, images and other multimedia content, based on user behavior trends and user data for commercial use
See TMEP §§1402.01, 1402.03.
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 acceptable “copy” is a document that has been issued to 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 certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 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).
An examining attorney may suspend action on a U.S. application pending issuance of a foreign registration in a Trademark Act Section 44(d) application, or pending renewal of a foreign registration in a Section 44(e) application. TMEP §716.02(b). However, once the registration issues in a Section 44(d) application, the examining attorney will suspend the application only if the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). Id. No such circumstances were alleged in applicant’s response.
If applicant is unable to provide a copy of the foreign registration, applicant must more particularly describe the current status of the foreign application/registration, so that the examining attorney can take appropriate action. See 37 C.F.R. §2.61(b).
Therefore, for the forgoing reasons registration must be refused and the requirement to provide a true copy of the foreign registration is maintain and made FINAL.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Jaime Batt
/Jaime Batt/
USPTO Trademark Examining Attorney
Law Office 125
(571)-272-1125
jaime.batt@uspto.gov
RESPONSE GUIDANCE