To: | Smash Technologies LLC (ipdocket@thompsoncoburn.com) |
Subject: | U.S. Trademark Application Serial No. 88205789 - CLIK - 52578-179896 |
Sent: | September 09, 2019 01:31:43 PM |
Sent As: | ecom109@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88205789
Mark: CLIK
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Correspondence Address:
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Applicant: Smash Technologies LLC
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Reference/Docket No. 52578-179896
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 09, 2019
This letter responds to applicant’s communication filed on August 16, 2019, (the “Response”) in which Applicant proposed an amended identification of goods. The proposed identification is accepted and recorded.
The present Non-final Office action issues a new refusal based on a likelihood of confusion with U.S. Registration Nos. 4307490 and 5583515. U.S. Registration No. 4307490 was cancelled before the examining attorney conducted his search of registered and pending marks that might bar registration under Trademark Act Section 2(d), and was reinstated after he conducted his search. TMEP §704.02; see 15 U.S.C. §1052(d). The examining attorney apologizes for any confusion.
Advisory: Summary of Issues
1. Refusal: Likelihood of Confusion—Section 2(d)
2. Advisory: Partial Abandonment
3. Advisory: Response Guidelines
Refusal: Likelihood of Confusion—Section 2(d)
THIS PARTIAL REFUSAL APPLIES TO CLASS 014 ONLY
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 the Marks
Applicant’s mark is, “CLIK”; the mark in U.S. Registration No. 4307490 is “CLICK”; and the mark in U.S. Registration No. 5583515 is “CLIQ.” All the marks are in standard characters.
Here, the marks sound identical, because the letter “K” has a sound identical to the letters, “CK” and “Q”. The only difference in the marks is the deletion of the second letter, “C” from the mark in U.S. Registration No. 4307490, i.e. “CLICK”; and the substitution of the letter “K” for the letter “Q” in U.S. Registration No. 5583515, i.e. “CLIQ.” These differences do not change the commercial impression of the marks. Thus, the marks are similar.
Comparison of the Goods
Applicant’s relevant goods are, “watch bands and straps” in Class 014.
The goods in U.S. Registration No. 4307490 are, “clocks and watches” in Class 014.
The goods in U.S. Registration No. 5583515 are, “jewelry” in Class 014.
Thus, the goods of the parties are related.
Conclusion
The similarities between the marks, the goods of the parties and the similarity of trade channels create a likelihood of confusion. Given the analysis above, and given that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
Advisory: Partial Abandonment
Advisory: Response Guidelines
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.
How to respond. Click to file a response to this nonfinal Office action
/Gilbert M. Swift/
Trademark Examining Attorney
Law Office 109
Tel. 1+(571) 272-9028
Gilbert.Swift@uspto.gov
RESPONSE GUIDANCE