To: | Elite Brands Inc. (rec@briefjustice.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88169029 - INSTAPRINT - File # 4574 |
Sent: | 11/28/2018 4:15:38 PM |
Sent As: | ECOM105@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88169029
MARK: INSTAPRINT
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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: Elite Brands 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: 11/28/2018
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.
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5061916. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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. 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
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark INSTAPRINT. Registrant’s mark is INSTA.
Registrant’s mark is entirely incorporated within applicant’s mark. Indeed, each mark features INSTA in a manner that makes the marks as a whole highly similar in sound and appearance. They also give off a similar commercial impression that suggests something is instantaneous.
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Goods
The goods are compared to determine whether they are similar, 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, 1207.01(a)(vi).
The compared goods 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
In the present case, applicant has applied for the mark for use in connection with:
Class 9: Downloadable computer software for modifying the appearance and enabling transmission of photographs; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks
Registrant has registered the cited mark for use in connection with:
Class 9: cameras; cameras with built-in photo printer; photo printers
The attached internet evidence from Nikon, Canon, GoPro, and Sony shows that the same source that offers software for the transmission and modification of photographs and other electronic media like the goods listed by registrant commonly also offers cameras and photo printers like the goods identified by applicant under the same mark. http://www.nikonusa.com/en/nikon-products/imaging-software/index.page; http://www.nikonusa.com/en/nikon-products/cameras.page; http://www.sony.com/image-editing-video-production-software?cpint=SG_CATEGORY_SEC-TOUT-OTHER-CAMERA-EN_GL-2018-04-M08-STUNNINGRESOLUTION-TOUT03-TAKEYOUR; http://www.sony.com/electronics/cameras; http://shop.gopro.com/softwareandapp; http://shop.gopro.com/cameras/fusion/CHDHZ-103.html; http://shop.usa.canon.com/shop/en/catalog/pixma-ts6120-black-all-in-one-inkjet-printer?cm_mmc=GA-_-pixma_ts6120_white_all_in_one_inkjet_printer-_-G_Canon_Product+Listing+Ads-_-41696&krypto=ZTVJd%2Bxy7SYCQCRXyyko6jQk6fg8jOZJ6vPErm6Uo25Rb7PU1qTgQPZV7elfom1Es%2FbJJobL9TzVYGef6CrIdZC2N91g1SOJiUg%2Bjj6pHIu4kPXfRqooC8Jhod70BfSW%2BLdicoTC9ML9TpWUOPhXgyfKiMsYTR8O2omwtxojUDkff0vW%2Fxe66rW7qVJYL9IlOUsnr6zjbJ8U0wGnSROk07rrYydPM%2Fcj9hE5R3ovjKyRkAKNL5nh3dxeGTbvzwToAtkKFXY8MT23i%2BvK%2FD4Rvw%3D%3D&ddkey=http%3Aen%2Fcatalog%2Fpixma-ts6120-white-all-in-one-inkjet-printer; http://www.usa.canon.com/internet/portal/us/home/explore/printing-innovations/mobile-printing/easy-photoprint-editor.
Applicant and registrant’s goods are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's goods are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the goods of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with a registered mark, and registration is properly refused on the Principal Register under Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ASSISTANCE
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.
Robert N. Guliano
/Robert N. Guliano/
Examining Attorney
Law Office 105
571-272-0174
robert.guliano@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.