To: | Chengzhi Corp. (sheulaw@hotmail.com) |
Subject: | U.S. Trademark Application Serial No. 88250506 - IVIEW - N/A |
Sent: | August 17, 2020 07:53:17 PM |
Sent As: | ecom122@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88250506
Mark: IVIEW
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Correspondence Address:
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Applicant: Chengzhi Corp.
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Reference/Docket No. N/A
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: August 17, 2020
INTRODUCTION
This Office action is in response to applicant’s communication filed on July 13, 2020.
In a previous Office action dated July 10, 2020, 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 registered marks in U.S. Registration Nos. 5941158, 4238770, and 4154856.
In its July 13, 2020 response, applicant submitted a claim of ownership of U.S. Registration Nos. 3694762 and 5626264, which were already claimed in a previous response dated April 8, 2019.
Upon further consideration, the trademark examining attorney withdraws the Section 2(d) refusal as it pertains to applicant’s Class 9 goods. The trademark examining attorney maintains and now makes FINAL the refusal 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
THIS PARTIAL REFUSAL APPLIES TO CLASS 11 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 Nos. 5941158, 4238770, and 4154856. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
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.
Applicant has applied to register the mark IVIEW in standard characters for “Light bulbs; Electric coffee makers” in International Class 11.
The registered marks are:
U.S. Registration No. 5941158, owned by Wiltronic Corporation: IVIEW with design for “Electric coffee makers” in International Class 11.
U.S. Registration No. 4238770, owned by CPS Products Canada Ltd.: IVIEW in standard characters for “Light emitting diode light strip” in International Class 11.
U.S. Registration No. 4154856, owned by Keurig Green Mountain, Inc.: VUE in standard characters for “Electric coffee, tea, and hot cocoa brewing machines for domestic and commercial use” in International Class 11.
Similarity of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Similarity to U.S. Registration No. 5941158
Here, applicant’s mark is confusingly similar to the registered mark because both marks share the identical wording IVIEW. Thus, the marks are identical in sound and similar in appearance and overall connotation. Since the word portions of the marks are identical in appearance, sound, connotation, and commercial impression, the presence of a design element in the registered mark does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the dominant element of the registered mark is identical to the entirety of the applied-for mark, and 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. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). For this reason, purchasers encountering the applied-for and registered marks are likely to believe that they identify a single source. Thus, the marks are confusingly similar.
Similarity to U.S. Registration No. 4238770
In the present case, applicant’s mark is IVIEW and registrant’s mark is IVIEW. 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 and/or services. Id.
Therefore, the marks are confusingly similar.
Similarity to U.S. Registration No. 4154856
Here, applicant’s mark is confusingly similar to the registered mark because the VIEW portion of applicant’s mark is similar in sound, meaning, and overall commercial impression to the registered mark, VUE. The VIEW portion of the applied-for mark and VUE in the registered mark are essentially phonetic equivalents and thus sound highly similar overall. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Additionally, the previously attached dictionary evidence shows that VUE means “view,” and therefore, the meanings and commercial impressions of the marks are also similar.
The addition of the letter I is not sufficient to obviate the similarities between the VIEW / VUE elements of the marks. 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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). The previously attached evidence shows that the letter “I” used as a prefix is commonly understood by the purchasing public as referring to the Internet when used in relation to Internet-related products, such as those identified in the application. Specifically, the evidence from Wiktionary shows that the prefix I- alludes to the Internet or digital devices, which are common features of coffee makers. See attached evidence showing internet-connected coffee makers. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording VIEW the more dominant element of the mark. As discussed above, this VIEW element has a highly similar sound, meaning, and overall connotation to the registered VUE mark.
Thus, the marks are confusingly similar.
The examining attorney notes that the applicant has not submitted any arguments regarding the similarity of the marks.
Relatedness of Goods
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Relatedness to U.S. Registration No. 5941158
In this case, the goods in the application and registration identified as “Electric coffee makers” are identical. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Relatedness to U.S. Registration No. 4238770
Relatedness to U.S. Registration No. 4154856
In this case, the application does not limit its electric coffee makers to a specific type or use, such that it is presumed to encompass all types, including the registrant’s more narrowly defined electric coffee machines for domestic and commercial use. 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 goods 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 goods and/or services of the parties have no restrictions as to nature, type, 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 goods and/or services are related.
Therefore, since the marks are confusingly similar and the goods are closely related, purchasers are likely to mistakenly believe that they emanate from a common source. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
The examining attorney notes that the applicant has not submitted any arguments regarding the relatedness of the goods identified in the application and registration.
Considering all of the above, the refusal under Trademark Act Section 2(d) is hereby made FINAL.
RESPONSE GUIDELINES – PARTIAL ABANDONMENT ADVISORY
In such case, the application will proceed for the following class only: International Class 9.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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).
Young Wolfe
/Young Wolfe/
Trademark Examining Attorney
Law Office 122
571-272-5579
young.wolfe@uspto.gov
RESPONSE GUIDANCE