| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88157606 |
| LAW OFFICE ASSIGNED | LAW OFFICE 100 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88157606/mark.png |
| LITERAL ELEMENT | TOGGLE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The instant application has been initially rejected for registration on the Principal Register. In rejecting the application, the Examining Attorney alleged that a likelihood of confusion exists between Applicant’s mark TOGGLE and the registered mark of U.S. Registration No. 4,599,248, TOGGLE MOBILE. Applicant respectfully traverses the rejection and submits that there is no likelihood of confusion between its mark and the mark of the cited registration. When performing a likelihood of confusion analysis, the first step is to analyze the respective marks for similarities in appearance, sound, connotation and commercial impression. The marks should be analyzed in their entirety. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). A similarity as to one factor is not dispositive of the entire analysis as “any one of these means of comparison may be critical in finding the marks to be similar.” In re Thor Tech, Inc., 90 U.S.P.Q.2D (BNA) 1634 (TTAB 2009). The use of identical words in common does not automatically mean that two marks are confusingly similar. Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176, 1183 (11th Cir. 1985). Rather, in conducting this analysis, one must look to the overall impression created by the marks and not merely compare individual features. See, e.g., Sun Banks of Fla., Inc. v. Sun Fed. Sav. and Loan Ass'n, 651 F.2d 311, 317-18, 211 USPQ 844, 850 (5th Cir. 1981) (no likelihood of confusion between SUN FEDERAL and SUN BANKS for similar services). The marks are not visually or phonetically similar. When comparing marks, one cannot “give dispositive weight to any one component of the marks, such as a shared syllable.” Hornady Mfg. Co. v. Doubletap, Inc., 746 F.3d 995, 1002 (10th Cir. 2014). “Similarity is gauged on three levels: sight, sound, and meaning." Id. In this case, the appearance of TOGGLE and TOGGLE MOBILE is not similar. In Hornady the court held that a mark DOUBLETAP was not likely to confuse consumers with the mark TAP. Id. The court held that where the only similarity between the marks was the word TAP it was not sufficient to confuse consumers. Id. Applicant respectfully submits that the difference in connotation and commercial impression conveyed by the marks is also sufficient to distinguish the marks and avoid any likelihood of confusion. See Champagne Louis Roederer v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998) citing Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1388, 9 U.S.P.Q.2d 1736, 1739 (Fed.Cir.1989) (agreeing with the Board that the “more important fact for resolving the issue of likelihood of confusion ... is the dissimilarity in commercial impression between the marks”). In Champagne Louis Roederer, the court found CRISTAL for champagne and CRYSTAL CREEK for wine to be dissimilar in appearance, sound and commercial impression because CRISTAL suggests a clarity of the wine while CRYSTAL CREEK suggests a clear stream. Id. TOGGLE alone has a different connotation and commercial impression than TOGGLE coupled with MOBILE. The word TOGGLE alone implies switching between items. For example, toggling between windows, views, or screens on a computer. Therefore, TOGGLE when associated with applicant’s applied for services creates a consumer impression of toggling between camera views from multiple cameras on a shared network, such as surveillance video systems, trail cameras, sporting event cameras, etc. Alternatively, the addition of the word MOBILE in TOGGLE MOBILE when associated with the registered services creates the commercial impression of a mobile services provider that allows the consumer to use more than one mobile device on the subscription plan. Therefore, when considering the difference in the words the appearance of the two marks is not likely to cause consumer confusion. The next step is to analyze any “similarity or dissimilarity and nature of the goods or services.” In re E. I. Du Pont de Nemours & Co., 476 F.2d at 1361. “Use in the same broad field is not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion." Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992). See also: In re Thor Tech, Inc., 113 U.S.P.Q.2D (BNA) 1546 (TTAB 2015) (holding that identical marks for an RV and a truck were not likely to confuse consumers even though trucks and trailers are complimentary.) In In re Thor Tech, Inc., the court held that two identical marks of “TERRAIN” were not likely to confuse consumers because one was for recreational vehicles and the other was for trucks. 113 U.S.P.Q.2D (BNA) at 1549. The Court held that while recreational vehicles and trucks both operate on the road and are complementary, the Court could not conclude “that consumers would assume a common source for the goods despite their complementary nature.” Id. at 716. Applicant’s applied for services are specifically different and noncompetitive with the services of TOGGLE MOBILE. Applicant’s applied for services as amended herein are as follows: telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of a wireless communications network with an access point and at least one client, a network access point accepting of multiple administrators and a wireless mesh network of multiple camera nodes By contrast, the services for TOGGLE MOBILE are as follows: Telecommunications services, namely, providing prepaid minutes for use on cell phones abroad; telecommunication services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; providing telephone services via prepaid telephone cards, telephone debit cards, SIM cards and rechargeable telephone cards Applicant’s applied for services are distinguishable over the services of TOGGLE MOBILE at least because Applicant’s telecommunication services are being applied by means of a wireless communication network, while TOGGLE MOBILE’s services are being applied by means of telephone, telegraphic, cable, and satellite transmissions. Additionally, Applicant’s wireless network is a wireless network of multiple camera nodes. Whereas TOGGLE MOBILE’s services appear to be drawn to telephone and/or mobile phone services rather than cameras. While some mobile phones may include cameras, cameras and mobile phones are at most complementary goods similar to an RV and a truck, which is not sufficient to confuse consumers. See In re Thor Tech. at 716. For at least the foregoing reasons, the mark TOGGLE used with telecommunication services by means of wireless communication networks with a wireless network of multiple camera nodes is not likely to confuse consumers with the mark TOGGLE MOBILE as used with telecommunication services by means of telephone, telegraphic, cable, and satellite providing telephone services. As such, the Applicant respectfully requests that the Examiner withdraw the 15 U.S.C. § 1052(d) rejection of the mark. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 038 |
| DESCRIPTION | |
| telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of a wireless communications network with an access point and at least one client, a network access point accepting of multiple administrators and a WiFi mesh network of multiple camera nodes | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 038 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of a wireless communications network with an access point and at least one client, a network access point accepting of multiple administrators and a wireless mesh network of multiple camera nodes | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | TOGGLE appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Krista Powell/ |
| SIGNATORY'S NAME | Krista Weber Powell |
| SIGNATORY'S POSITION | Attorney of Record, Utah Bar Member |
| SIGNATORY'S PHONE NUMBER | 801-532-1922 |
| DATE SIGNED | 03/22/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Mar 22 15:43:02 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 190322154302419371-881576 06-62097f41488265311b9bcd a9e591f6b8d167bd339f7cc12 1317710381173b5ed42-N/A-N /A-20190322130152705026 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The instant application has been initially rejected for registration on the Principal Register. In rejecting the application, the Examining Attorney alleged that a likelihood of confusion exists between Applicant’s mark TOGGLE and the registered mark of U.S. Registration No. 4,599,248, TOGGLE MOBILE. Applicant respectfully traverses the rejection and submits that there is no likelihood of confusion between its mark and the mark of the cited registration.
When performing a likelihood of confusion analysis, the first step is to analyze the respective marks for similarities in appearance, sound, connotation and commercial impression. The marks should be analyzed in their entirety. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). A similarity as to one factor is not dispositive of the entire analysis as “any one of these means of comparison may be critical in finding the marks to be similar.” In re Thor Tech, Inc., 90 U.S.P.Q.2D (BNA) 1634 (TTAB 2009). The use of identical words in common does not automatically mean that two marks are confusingly similar. Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176, 1183 (11th Cir. 1985). Rather, in conducting this analysis, one must look to the overall impression created by the marks and not merely compare individual features. See, e.g., Sun Banks of Fla., Inc. v. Sun Fed. Sav. and Loan Ass'n, 651 F.2d 311, 317-18, 211 USPQ 844, 850 (5th Cir. 1981) (no likelihood of confusion between SUN FEDERAL and SUN BANKS for similar services).
The marks are not visually or phonetically similar. When comparing marks, one cannot “give dispositive weight to any one component of the marks, such as a shared syllable.” Hornady Mfg. Co. v. Doubletap, Inc., 746 F.3d 995, 1002 (10th Cir. 2014). “Similarity is gauged on three levels: sight, sound, and meaning." Id. In this case, the appearance of TOGGLE and TOGGLE MOBILE is not similar. In Hornady the court held that a mark DOUBLETAP was not likely to confuse consumers with the mark TAP. Id. The court held that where the only similarity between the marks was the word TAP it was not sufficient to confuse consumers. Id.
Applicant respectfully submits that the difference in connotation and commercial impression conveyed by the marks is also sufficient to distinguish the marks and avoid any likelihood of confusion. See Champagne Louis Roederer v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998) citing Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1388, 9 U.S.P.Q.2d 1736, 1739 (Fed.Cir.1989) (agreeing with the Board that the “more important fact for resolving the issue of likelihood of confusion ... is the dissimilarity in commercial impression between the marks”). In Champagne Louis Roederer, the court found CRISTAL for champagne and CRYSTAL CREEK for wine to be dissimilar in appearance, sound and commercial impression because CRISTAL suggests a clarity of the wine while CRYSTAL CREEK suggests a clear stream. Id. TOGGLE alone has a different connotation and commercial impression than TOGGLE coupled with MOBILE. The word TOGGLE alone implies switching between items. For example, toggling between windows, views, or screens on a computer. Therefore, TOGGLE when associated with applicant’s applied for services creates a consumer impression of toggling between camera views from multiple cameras on a shared network, such as surveillance video systems, trail cameras, sporting event cameras, etc. Alternatively, the addition of the word MOBILE in TOGGLE MOBILE when associated with the registered services creates the commercial impression of a mobile services provider that allows the consumer to use more than one mobile device on the subscription plan. Therefore, when considering the difference in the words the appearance of the two marks is not likely to cause consumer confusion.
The next step is to analyze any “similarity or dissimilarity and nature of the goods or services.” In re E. I. Du Pont de Nemours & Co., 476 F.2d at 1361. “Use in the same broad field is not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion." Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992). See also: In re Thor Tech, Inc., 113 U.S.P.Q.2D (BNA) 1546 (TTAB 2015) (holding that identical marks for an RV and a truck were not likely to confuse consumers even though trucks and trailers are complimentary.) In In re Thor Tech, Inc., the court held that two identical marks of “TERRAIN” were not likely to confuse consumers because one was for recreational vehicles and the other was for trucks. 113 U.S.P.Q.2D (BNA) at 1549. The Court held that while recreational vehicles and trucks both operate on the road and are complementary, the Court could not conclude “that consumers would assume a common source for the goods despite their complementary nature.” Id. at 716.
Applicant’s applied for services are specifically different and noncompetitive with the services of TOGGLE MOBILE. Applicant’s applied for services as amended herein are as follows:
telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of a wireless communications network with an access point and at least one client, a network access point accepting of multiple administrators and a wireless mesh network of multiple camera nodes
By contrast, the services for TOGGLE MOBILE are as follows:
Telecommunications services, namely, providing prepaid minutes for use on cell phones abroad; telecommunication services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; providing telephone services via prepaid telephone cards, telephone debit cards, SIM cards and rechargeable telephone cards
Applicant’s applied for services are distinguishable over the services of TOGGLE MOBILE at least because Applicant’s telecommunication services are being applied by means of a wireless communication network, while TOGGLE MOBILE’s services are being applied by means of telephone, telegraphic, cable, and satellite transmissions. Additionally, Applicant’s wireless network is a wireless network of multiple camera nodes. Whereas TOGGLE MOBILE’s services appear to be drawn to telephone and/or mobile phone services rather than cameras. While some mobile phones may include cameras, cameras and mobile phones are at most complementary goods similar to an RV and a truck, which is not sufficient to confuse consumers. See In re Thor Tech. at 716.
For at least the foregoing reasons, the mark TOGGLE used with telecommunication services by means of wireless communication networks with a wireless network of multiple camera nodes is not likely to confuse consumers with the mark TOGGLE MOBILE as used with telecommunication services by means of telephone, telegraphic, cable, and satellite providing telephone services. As such, the Applicant respectfully requests that the Examiner withdraw the 15 U.S.C. § 1052(d) rejection of the mark.