To: | HANGZHOU INSHOT TECH CO.,LTD (realmark.uk@outlook.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88209730 - GLITCHCAM - N/A |
Sent: | 2/12/2019 6:57:10 AM |
Sent As: | ECOM113@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88209730
MARK: GLITCHCAM
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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: HANGZHOU INSHOT TECH CO.,LTD
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID PARTIAL 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: 2/12/2019
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.
Summary of Issues Applicant Must Address
This Office action also includes an advisory regarding earlier filed applications.
Section 2(d) Refusal – Likelihood of Confusion – As to Specific Services
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5040432. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
The applicant has applied to register GLITCHCAM in stylized form for:
Editing or recording of sounds and images; Educational examination services; Educational services, namely, conducting classes, seminars, workshops in the field of computers, computer games; Electronic desktop publishing; Electronic games services provided by means of the internet; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, providing online video games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing temporary use of non-downloadable computer learning games; Entertainment services, namely, providing online electronic games; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing an on-line computer game; Film production, other than advertising films; Gambling services; Games equipment rental; Non-downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals and blogs in the field of computer and video games; Operating lotteries; Organisation of games; Organization of sports competitions; Party planning; Photo editing; Post-production editing services in the field of music, videos and film; Production of music; Production of musical videos; Providing amusement arcade services; Providing information on-line relating to computer games and computer enhancements for games; Providing information relating to education services; Providing on-line computer games; Providing recreation facilities; Publication of books; Scriptwriting services for non-advertising purposes; Training services in the field of computers, computer games; Video editing; Entertainment services, namely, casino gaming; Entertainment services, namely, arranging for ticket reservations for water parks and amusement centers; Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; Providing casino facilities; Providing information relating to organizing community sporting and cultural activities, contests and games, in Class 41.
This refusal is limited to the services highlighted above in bold.
The registered mark is THE GLITCH in standard-character form for:
Entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings; Entertainment services in the nature of recording, production and post-production services in the field of music; Entertainment, namely, live performances by a musical band; Production of music, in Class 41.
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 Services
In this case, the parties’ services both include music production and post-production services. The applicant’s film and video production, and video editing services may also include music production services, such as production of music videos. The applicant’s “Editing or recording of sounds and images” is broad enough to include the registrant’s music recording services. The applicant’s photo and image editing are also closely related to the registrant’s services because these services could include editing of photos and images of musical performers. The applicant’s “Entertainment services, namely, live, televised and movie appearances by a professional entertainer” are also closely related to the registrant’s live performances by a musical band because the applicant’s “entertainer” could be a band or similar musical performer. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to channels of trade or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Comparison of the Marks
In this case, the applicant’s mark GLITCHCAM and the registrant’s mark THE GLITCH are similar in commercial impression.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
The applicant’s mark combines the identical term GLITCH with the term CAM, which would be perceived as an abbreviation for “camera.” Because some of the applicant’s services involve photos and video, the term CAM in the mark merely describes these services and is entitled to less weight in comparing the marks. Additionally, this term does not change the meaning of the common term GLITCH.
Thus, when viewed in their entireties, the marks are similar in commercial impression.
Since the marks are similar and the goods closely related and in part identical, there is a likelihood of confusion as to the source of applicant’s services included in this refusal. Therefore, applicant’s mark is not entitled to registration, and registration is refused under Section 2(d) as to the services identified above.
Potential Section 2(d) Refusal – Likelihood of Confusion – As to Specific Services
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.
The applicant is advised that if the applicant's mark is refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with any of the marks in these applications, the following services will not be included in the refusal:
Educational examination services; Electronic desktop publishing; Providing information relating to education services; Publication of books; Scriptwriting services for non-advertising purposes; Multimedia publishing of books, magazines, journals, and electronic publications, in Class 41.
ADVISORY – Domestic Representative
Applicant may file a designation of domestic representative form online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
A designation of domestic representative must be personally signed or include an electronic signature personally entered by someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner), or an authorized attorney. 37 C.F.R. §§2.24(a)(1)(ii), 2.193(a), (e)(8); TMEP §610.
ADVISORY – Partial Abandonment
Editing or recording of sounds and images; Educational services, namely, conducting classes, seminars, workshops in the field of computers, computer games; Electronic games services provided by means of the internet; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, providing online video games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing temporary use of non-downloadable computer learning games; Entertainment services, namely, providing online electronic games; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing an on-line computer game; Film production, other than advertising films; Gambling services; Games equipment rental; Non-downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals and blogs in the field of computer and video games; Operating lotteries; Organisation of games; Organization of sports competitions; Party planning; Photo editing; Post-production editing services in the field of music, videos and film; Production of music; Production of musical videos; Providing amusement arcade services; Providing information on-line relating to computer games and computer enhancements for games; Providing on-line computer games; Providing recreation facilities; Training services in the field of computers, computer games; Video editing; Entertainment services, namely, casino gaming; Entertainment services, namely, arranging for ticket reservations for water parks and amusement centers; software, games, music; Providing casino facilities; Providing information relating to organizing community sporting and cultural activities, contests and games
The application will then proceed with the following services only:
Educational examination services; Electronic desktop publishing; Providing information relating to education services; Publication of books; Scriptwriting services for non-advertising purposes; Multimedia publishing of books, magazines, journals, and electronic publications, in Class 41.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Response Guidelines
Responses to Office actions must be properly signed. See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01. If an applicant is not represented by an attorney, the response must be signed by someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.
For this application to proceed further for all of the applicant’s services, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements.
In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c). Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.
/Kim Teresa Moninghoff/
Examining Attorney
Law Office 113
Phone: 571-272-4738
Fax: 571-273-9113
Email: kim.moninghoff@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.