To: | LG Electronics Inc. (docketing@finnegan.com) |
Subject: | U.S. Trademark Application Serial No. 88223500 - OBJET - 14438.0011 |
Sent: | December 19, 2019 01:48:54 PM |
Sent As: | ecom126@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88223500
Mark: OBJET
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Correspondence Address: Mark Sommers and Naresh Kilaru Finnegan, Henderson, Farabow, Garrett &
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Applicant: LG Electronics Inc.
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Reference/Docket No. 14438.0011
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: December 19, 2019
This Office action is in response to applicant’s communication filed on November 18, 2019 (“Applicant’s Response”).
In a previous Office actions dated March 4, 2019, and suspensions letters dated July 26, 2019 and October 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:
· Trademark Act Section 2(d) for a likelihood of confusion with a registered mark
· Prior-filed application that could be a bar to registration as possible likelihood of confusion
In addition, applicant was required to satisfy the following requirement(s):
· amend the identification of goods
· provide a translation
Based on its response, applicant has satisfied:
· definite amended identification provided in Response dated September 12, 2019
· translation provided in Response dated June 20, 2019
See TMEP §§713.02, 714.04.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn:
· prior-filed application SN 87093013 based on consent agreement signed by the prior applicant
See TMEP §§713.02, 714.04.
However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION CLASS 9 ONLY
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 2593594. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2593594. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is OBJET for “Televisions; audio equipment, namely, digital audio players, audio speakers, and radios.”
The cited registration is OBJET (Reg. No. 2593594) for “COMPUTER HARDWARE; COMPUTER SOFTWARE FOR USE IN DIGITAL PRINTING AND DIGITAL IMAGING IN THE FIELD OF THREE DIMENSIONAL PRINTING AND MODEL BUILDING.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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
In the present case, applicant’s mark is OBJET and registrant’s mark is OBJET. These marks are identical 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. Id.
Therefore, applicant’s mark and registrant’s mark share the same commercial impression and are confusingly similar.
Comparison of Goods/Services
The attached Internet evidence, consisting of screenshots from www.samsung.com, us.dynabook.com, tvna.compal-toshiba.com, Panasonic.com, and lg.com establishes that the same entity commonly produces the relevant goods, namely, computers and television and audio equipment such as speakers and radios, and markets the goods under the same mark. Thus, applicant’s and registrant’s goods 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).
Because the marks are confusingly similar and the goods and/or services are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act for applicant’s goods in International Class 9.
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
RESPONSE GUIDELINES
In such case, the application will proceed for the following class only: International Class 11.
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 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).
/Katherine Ferrell/
Examining Attorney
Law Office 126
(571)-270-3576
Katherine.Ferrell@uspto.gov
RESPONSE GUIDANCE