To: | Summit Networks Ltda (gxbesq1@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88262883 - UNIQ - N/A |
Sent: | September 03, 2019 05:33:03 PM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88262883
Mark: UNIQ
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Correspondence Address: Law Offices of Gene Bolmarcich
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Applicant: Summit Networks Ltda
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Reference/Docket No. N/A
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 03, 2019
On May 6, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88135670. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5638523, 5543809, 5543808, 4589567, 5228410, and 5761858 Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations in this office action and the previous office action. U.S. Registration Nos. 5638523, 5543809, and 5543808 are owned by the same entity.
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
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).
The registered marks are CUNIQ, CUNIQ, CUNIQ, UNIQ, UNIQON, and XIUNIQ, U.S. Registration Nos. 5638523, 5543809, 5543808, 4589567, 5228410, and 5761858 respectively.
Regarding the applied-for mark and the registered mark UNIQ, the 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.
Concerning the other registered marks and the applied-for mark, the registered marks incorporate the applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part for the wording UNIQ.
Further, the applied-for mark is in standard character and thus can be displayed in the same manner as the registered marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In sum, given the highly similar appearance, meaning, connotation, and commercial impression of the registered and applied-for marks it follows that consumers will confuse the marks.
Comparison of Goods/Services
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, despite the applicant’s arguments that in actual use the channels of trade differ. 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)).
The applicant’s goods and services are the following:
Class 38: Audio teleconferencing; Call recording services; Communications by computer terminals; Computer telephony services; Electronic message sending; Electronic, electric, and digital transmission of voice, data, images, signals, and messages; Hosted PBX services; Mobile telephone communication; Telephony communication services; Video teleconferencing; Videoconferencing services; Wireless PBX services
Class 42: Design of unified communications services; Software as a service (SAAS) services, namely, hosting software for use by others for use electronic, electric and digital transmission of voice, data, images, signals and messages
U.S. Registration No. 5638523, 5543809, and 5543808 services are “Telecommunication access services; wireless broadband communication services; wireless telephone services; electronic communication services being electronic transmission of data and documents among users of computers; computer network communication services, namely, providing private and secure real time electronic communication over a computer network; video conferencing services; video on-demand transmission services; telephone voice messaging services; paging services; telegraph services; communication by teletext machine; telegraphic wire services; wire services being news agency services for electronic transmission; satellite communications services; electronic transmission of e-mail; providing access to computer databases, computer networks and Internet and providing on-line communications links which transfer the web site user to other local and global web pages; providing telecommunications connection to a global computer network; electronic data exchange services stored in databases accessible via telecommunication networks; communication by computer terminals, transmission of electronic mail, communication by electronic computer terminals, cable transmission of sounds, images, signals and data, communication by fibre optic networks, and telephone communications; leasing of telecommunication lines for access to computer networks; leasing of local area network equipment; rental of telecommunications equipment and apparatus; rental of telecommunication facilities; rental of modems; computer aided transmission of messages and images; facsimile transmission; message sending via a website; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, teletext machines, cable, computer and satellite means; electronic order-transmission services; electronic bulletin board services; rental of signal decoders and signalling apparatus being telecommunication apparatus; radio communication services; communication of information by television, namely, television broadcasting services; transmission of sound, video and information in the nature of music, video films, interactive programmes and videos; Providing electronic transmission of credit card transaction data and electronic payment data via a global computer network; providing access to digital music web sites on the Internet; providing telecommunication access to MP3 web sites on the Internet via a global computer network; delivery of digital music by electronic transmission; operating chat rooms; advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network or provided by other means of communication.”
U.S. Registration No. 4589567 goods are “Computer software development tools; computer software for use as an application programming interface (AP); application programing interface (API) for computer software which facilitates online services for social networking and allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, linking, sharing or otherwise providing electronic media or information via computer and communication networks.”
U.S. Registration No. 5228410 services are “Data communication by electronic signal via online network; Transmission and reception of database information via the telecommunication network.”
U.S. Registration No. 5761858 goods includes “Software for processing images, graphics and text; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Electronic communications systems comprised of computer hardware and software for the transmission of data between two points.”
Regarding U.S. Registrations Nos. 5638523, 5543809, and 5543808, the application use(s) broad wording to describe the Class 38 services, which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow services in Class 38. Concerning U.S. Registrations Nos. 4589567, 5228410, and 5761858 the registration use(s) broad wording to describe the software goods and services with an broader and more encompassing function, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow software goods and services with a narrower function. 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 and/or 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 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.
In total, the registered marks and the applied-for mark create the same commercial impression and the evidence shows that the goods and/or services are likely to be encountered together in the marketplace by the same consumers. Thus, consumers are likely to make the mistaken conclusion that the goods and/or services originate from the same source. Therefore, a likelihood of confusion exists and registration is refused under Trademark Act Section 2(d).
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
/Valerie Kaplan/
Trademark Examining Attorney
Law Office 107
571-272-6767
valerie.kaplan@uspto.gov
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