United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88307782
Mark: SOLVE
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Correspondence Address: 1299 PENNSYLVANIA AVENUE, NW, SUITE 700
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Applicant: Solve HQ, Inc.
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Reference/Docket No. 335152-20000
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 26, 2020
PRIOR-OFFICE ACTION / RESPONSE / SUSPENION / SUSPENSION INQURY: This Office action is supplemental to and supersedes all previous Office actions issued in connection with this application. The trademark examining attorney now issues the following new refusal, based on information and/or documentation in applicant’s suspension inquiry: Section 2(d) Refusal – Likelihood of Confusion – U.S. Trademark Reg. Nos. 5343758, 5352924, and 6010873. See TMEP §§706, 711.02.
In a previous Office action dated May 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: (1) Prior-Filed Applications, and (2) Section 2(d) Refusal – Likelihood of Confusion – U.S. Trademark Reg. Nos. 3513787, 4722879, 4722881, and 5710645. Applicant was also required to satisfy the following requirements: (1) Amendment Required – Identification of Goods, and (2) Multiple-Class Application Requirements.
Applicant filed a response to the May 3, 2019 Office action on November 4, 2019. The trademark examining attorney notes that, based on applicant’s November 4, 2019 response to the May 3, 2019 Office action, the following requirements were satisfied: (1) Amendment Required – Identification of Goods, and (2) Multiple-Class Application Requirements. The following refusals were also obviated: (1) Prior-Filed Applications – U.S. Trademark Application Serial Nos. 88292152, 88292148, 88169270, 88154865, and 88111074. Section 2(d) Refusal – Likelihood of Confusion – U.S. Trademark Reg. Nos. 3513787, 4722879, 4722881, and 5710645. See id. Action on this application was subsequently suspended on December 9, 2019 for the following reason: Prior-Filed Application – U.S. Trademark Application Serial No. 87869632.
Applicant filed a response to the December 9, 2019 suspension on April 9, 2020. The trademark examining attorney notes that, based on applicant’s April 9, 2020 response to the December 9, 2019 suspension, the following refusal has also been obviated: Prior-Filed Application – U.S. Trademark Application Serial No. 87869632.
SUMMARY OF ISSUES: Applicant must respond to all issues raised in this Office action and the previous May 3, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
I. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION - U.S. TRADMARK REG. NOS. 5343758, 5352924, and 6010873
The Marks
The applied-for mark is SOLVE, in standard characters, for “Downloadable computer software applications for transmitting videos and films in the fields of drama, live action, and comedy entertainment to wireless devices via a global computer network; Computer software, namely, downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment” in International Class 9, and “Providing temporary use of non-downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment” in International Class 42.
The registered marks are as follows:
SOLVE, in standard characters, for “Audio and video recordings featuring talks, demonstrations, performances, seminars, and workshops, in the field of community and global problem solving; audio and video recordings featuring talks, demonstrations, and performances, in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues; downloadable audio and video recordings featuring talks, demonstrations, performances, seminars, and workshops in the field of community and global problem solving; downloadable audio and video recordings featuring talks, demonstrations, and performances, in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues” in International Class 9, and “Educational services, namely, conducting live talks, demonstrations, and performances in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues; educational services, namely, providing an in-person educational forum for local community groups of businesses, NGOs, schools, and individuals to facilitate and foster activities to address community and global challenges in the field of problem solving; educational services, namely, conducting live talks, demonstrations, speeches, seminars and workshops in the field of community and global problem solving; educational services, namely, providing online non-downloadable videos featuring talks, demonstrations, and performances in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues” in International Class 42.
SOLVE, in stylized characters, for” Audio and video recordings featuring talks, demonstrations, performances, seminars, and workshops, in the field of community and global problem solving; audio and video recordings featuring talks, demonstrations, and performances, in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues; downloadable audio and video recordings featuring talks, demonstrations, performances, seminars, and workshops in the field of community and global problem solving; downloadable audio and video recordings featuring talks, demonstrations, and performances, in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues” in International Class 9, and “Educational services, namely, conducting live talks, demonstrations, and performances in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues; educational services, namely, providing an in-person educational forum for local community groups of businesses, NGOs, schools, and individuals to facilitate and foster activities to address community and global challenges in the field of problem solving; educational services, namely, conducting live talks, demonstrations, speeches, seminars and workshops in the field of community and global problem solving; educational services, namely, providing online non-downloadable videos featuring talks, demonstrations, and performances in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues” in International Class 41.
PICSOLVE, in standard characters, for “Apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, recording discs and memory cards; compact discs, DVDs and other digital recording media in the nature of USB flash drives and memory cards featuring pre-recorded content in the nature of photographs and videos; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; downloadable computer software for creating, transmitting, modifying and displaying images and videos; photography equipment, namely, cameras, video cameras, memory cards, lenses for cameras, lights in the nature of electrical lights for use in professional quality photography, camera stands and mounting devices, tripods and portable light reflectors; video apparatus, namely, cameras, video cameras, memory cards, lenses for cameras, lights for use on video cameras, camera stands and mounting devices for monitors, tripods and microphones; exposed film, namely, exposed camera film, exposed slide film, exposed photographic film and exposed cinematographic film; photographic developing apparatus and instruments, namely, photography dark room lamps and photography drying racks; downloadable computer software for creating, transmitting, modifying and displaying images and videos; downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; downloadable computer software for use as an application programming interface (API) for creating, transmitting, modifying and displaying images and videos; downloadable computer software and hardware for creating, transmitting, modifying and displaying images and videos; downloadable computer software that allows users to view and purchase photographs and videos and share such photographs and videos via the Internet; downloadable digital images, namely, images and videos of people, places, pets, social, cultural and sporting events; recorded data storage media, namely, CDs, DVDs and USB flash drives featuring recorded images and videos of people, places, pets, social, cultural and sporting events; downloadable electronic publications in the nature of images and videos of people, places, pets, social, cultural and sporting events; cases especially made for photographic apparatus and instruments, namely, camera cases, lighting cases and tripod cases; cinematographic cameras; cinematographic film, exposed; close-up lenses; computer memory devices; computer programs, recorded for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; downloadable computer programs for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; computer software applications, downloadable for mobile phones, portable media players and handheld computers namely, for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; downloadable computer game software; computer software platforms, recorded or downloadable for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; computer screen saver software, recorded or downloadable; data processing apparatus; downloadable image files containing images of people, places, pets, social, cultural and sporting events; downloadable music files; downloadable graphics for mobile phones; apparatus for editing cinematographic film and photographs, namely, editing machines for films and photographs; downloadable electronic publications in the nature of photo books of people, places, pets, social, cultural and sporting events; enlarging apparatus for photography namely, photography projectors, green screens being projection screens, grey screens being projection screens and experience walls being projection screens; film cutting apparatus, namely, film splicers and downloadable digital photography editing software; filters for photography, namely, photographic filters, digital overlays specially adapted for touchscreen display; flash-bulbs for photography; flashlights for photography; frames for photographic transparencies; projection screens for photograph and video projection; remote control apparatus, namely, remote controls for projectors, green screens, grey screens and experience walls; screens for photography, namely, green screens being Projection screens, grey screens being Projection screens and experience walls being Projection screens; screens for photoengraving, namely, projection screens for photoengraving; selfie sticks being hand-held monopods for cameras and video cameras; selfie lenses, namely, lenses for cameras; shutter releases for photography; mobile phones; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; stands for photographic apparatus; television apparatus, namely, televisions; thermal imaging cameras; video recorders; viewfinders, photographic; sunglasses, eyeglasses; smart glasses; optical apparatus, namely, optical character recognition apparatus; parts and fittings relating to the aforesaid goods” in International Class 9, “Installation, updating and support in the nature of repair and maintenance of computer hardware; information, advisory and consultancy services in relation to all of the aforesaid” in International Class 37, “Processing of photographs; photographic printing; reproduction of photographic prints; photographic film development; processing of cinematographic films; binding of books or documents; covering of books in the nature of bookbinding of photo books or albums; printing services; digital printing services; digital on-demand printing services of books and other documents; information, advisory and consultancy services in relation to all of the aforesaid” in International Class 40, “Education services, namely, providing classes, seminars and workshops in the field of photography; providing of training in the field of photography; entertainment sporting and cultural activities in the nature of theme parks; providing amusement facilities in the nature of observatories and tourist attractions, namely, escape rooms, obstacle courses, fun houses, casinos and organizing film, architecture and ethnic festivals for cultural or entertainment purposes; photography; video recording services; videotape editing; production of pre-recorded data storage media including CDs, DVDs and USB flash drives featuring images and videos of people, places, pets, social, cultural and sporting events; provision of automated video recording services; provision of photo and video recording studio facilities; provision of audio and visual recording studio services; production of photographs, video, visual and/or sound recordings; special effects animation services for film and video; animation production services; training and education, namely, providing classes, seminars and workshops in the field of photography; training of staff and personnel in the field of photography; provision of training services and courses relating to advertising, promotion, sales, marketing and business; provision of training services relating to the maintenance of photographic and video equipment; provision of training services relating to the maintenance and support of software for the operation of photographic and video equipment; publishing of books; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable in the nature of images of people, places, pets, social, cultural and sporting events; providing on-line videos, not downloadable in the field of theme parks, observatories, cable cars, tourist attractions, casinos, festivals and tourism; rental of photographic, video and lighting apparatus and equipment; amusement park services; nightclub services, namely, arranging the capture of images of guests at events; casino services; rental of audio equipment; photographic reporting; videotaping; publishing of electronic publications; digital video, audio and multimedia publishing services; multimedia publishing of books, magazines, journals, software, games, music and electronic publications; information, advisory and consultancy services in relation to all of the aforesaid; mounting of prints, namely, production of photos, photo books, keyrings containing photographs, magnets containing photographs and digital photos and videos; photographic services, namely, the developing, collection, editing, organising, modifying, transmission, storage and sharing of photographs” in International Class 41, and “Design, development, installation, and updating of computer software; support in the nature of diagnosing computer hardware and software problems and maintenance of computer software; Design and development of computer hardware; design, development, installation, and updating of computer software; support in the nature of diagnosing computer hardware and software problems and maintenance of computer software for creating, modifying, viewing, transmitting, displaying, sharing and purchasing images and videos; design, development, installation, and updating, of computer software; support in the nature of diagnosing computer hardware and software problems and maintenance of computer software for the operation and monitoring of photographic and video equipment; providing software-as-a-service featuring software for the collection, editing, organising, modifying, transmission, storage and sharing of photographs and videos; rental of computer software; design and development of photographic and video equipment; graphic design; hosting and operation of online web-portals that allow users to view and purchase photographs and videos and share such photographs and videos via the Internet; database design and development; hosting of databases; cloud computing featuring software for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; electronic data storage; hosting computer web sites; monitoring of computer systems by remote access to ensure proper functioning; off-site data backup; packaging design; recovery of computer data; research and development of new products for others; information, advisory and consultancy services in relation to all of the aforesaid” in International Class 42.
Likelihood of Confusion Analysis
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 parties’ goods and/or services. 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). Any evidence of record related to those factors is considered, however “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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. Each of these factors is addressed in the sections below.
Similarity of the Marks
The applied-for mark SOLVE is confusingly similar to the registered SOLVE and PICSOLVE marks, which weighs in favor of a likelihood of confusion. The similarity of the applied-for mark to each of the registered marks is addressed in the subsections below.
SOLVE - U.S. Trademark Reg. No. – 5352924
The applied-for mark SOLVE is confusingly similar to the registered mark SOLVE, which weighs in favor of a likelihood of confusion.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
The applied-for mark and the registered mark in this case are both SOLVE, in standard characters. 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). The marks, because they are identical, are also likely to engender the same connotation and overall commercial impression when considered in connection with the parties’ respective goods and services. Id. The marks are thus confusingly similar.
Additionally, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
SOLVE - U.S. Trademark Reg. Nos. – 5343758
The applied-for mark SOLVE is confusingly similar to the registered mark SOLVE, which weighs in favor of a likelihood of confusion.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applied-for mark SOLVE is virtually identical to the registered mark SOLVE, as they both comprise the identical term SOLVE, and differs only in that the registered mark is in stylized characters. Character stylization fails to distinguish the marks, however, because the applied-for mark is in standard characters. 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). 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”). Applicant in this case has claimed the right to display SOLVE in any font or style it chooses, including the particular font and style specified in the registration.
The marks SOLVE and SOLVE are similar, and consumers who encounter the marks used in connection with similar or related goods and services are likely to be confused as to the source of those goods and services. Additionally, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
PICSOLVE – U.S. Trademark Reg. No. 6010873
The applied-for mark SOLVE is confusingly similar to the registered mark PICSOLVE, which weighs in favor of a likelihood of confusion.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applied-for mark SOLVE is similar to the registered mark PICSOLVE because they both contain or comprise the identical term SOLVE. The applied-for mark differs from the registered mark in that it omits the term PIC, however this omission fails to significantly distinguish the marks in this case. Merely omitting some of the wording from a registered mark generally does not avoid a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). The applied-for mark does not create a significantly distinct commercial impression from the registered mark because it contains some of the wording in the registered mark, and does not add any wording that would distinguish it from that mark.
Omission of PIC from the applied-for mark also fails to significantly distinguish the marks’ appearances in this case. Marks may be confusingly similar in appearance where similar terms or phrases, or similar parts of terms or phrases, appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Omission of PIC from the applied-for mark also fails to significantly distinguish it from the registered mark, because the shared term SOLVE is the dominant portion of the registered mark. The shared term SOLVE is the dominant portion of the registered mark, because the term PIC merely describes registrant’s good and services. Marks are compared in their entireties, however 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 attached evidence from the American Heritage dictionary shows that a “pic” is a “photograph”, i.e. an “image, especially a positive print, recorded by exposing a photosensitive surfaces to light, especially in a camera.” Registrant’s goods and services in this case are and/or feature “software that allows users to view and purchase photographs and videos and share such photographs and videos via the Internet.” The term PIC in the registered mark therefore merely describes registrant’s goods and services, and is less significant to the mark’s overall commercial impression than the shared term SOLVE.
The SOLVE and PICSOLVE are similar, and consumers who encounter the marks used in connection with similar or related goods and services are likely to be confused as to the source of those goods and services. The amount of mark similarity required to support a likelihood of confusion determination is also lower when the parties’ goods and/or services are “similar in kind and/or closely related” than when they are diverse. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Relatedness of the Goods and Services
SOLVE and SOLVE - U.S. Trademark Reg. Nos. – 5343758 and 5352924
Applicant’s software goods and services are related to registrant’s services, which weighs in favor of a likelihood of confusion.
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Goods and services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Applicant’s computer software goods and services are related to registrant’s services for “providing online non-downloadable videos featuring talks, demonstrations, and performances in the nature of speeches and artistic presentations” various fields because of the way these services are market and sold. The attached evidence from NPR.org, PBS.org, and CNN.com shows that “software for streaming audio-visual media content via the Internet and to mobile digital electronic devices” is commonly marketed and sold from the same sources, under the same brands or marks, as services like “providing online non-downloadable videos featuring talks, demonstrations, and performances in the nature of speeches and artistic presentations in the field of problem solving, informing the audience and covering the subject matter of technology, business, science, education, medicine, genomics, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, and social and cultural issues.” NPR, for example, hosts an array of audio-visual content on the Internet in a wide variety of fields, including video “talks, demonstrations, and performances in the nature of speeches and artistic presentations”, while also providing software for streaming and viewing this content.
Applicant’s software goods and services are, in light of the foregoing, related to registrant’s services for likelihood of confusion purposes.
PICSOLVE – U.S. Trademark Reg. No. 6010873
Applicant’s software goods and services are related to registrant’s goods and services, which weighs in favor of a likelihood of confusion.
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Likelihood of confusion is based on the description of the goods and 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)).
The registration uses in this case broad wording to describe “downloadable computer software for creating, transmitting, modifying and displaying images and videos”, “downloadable computer software for creating, transmitting, modifying and displaying images and videos”, “downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information”, “downloadable computer software and hardware for creating, transmitting, modifying and displaying images and videos”, “computer software applications, downloadable for mobile phones, portable media players and handheld computers namely, for the collection, editing, organising, modifying, transmission, storage and sharing of data and information”, and “computer software platforms, recorded or downloadable for the collection, editing, organising, modifying, transmission, storage and sharing of data and information”, which presumably encompasses all goods of those types, including applicant’s narrower “downloadable computer software applications for transmitting videos and films in the fields of drama, live action, and comedy entertainment to wireless devices via a global computer network” and “computer software, namely, downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment.” 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). The registration uses similarly broad wording to describe “providing software-as-a-service featuring software for the collection, editing, organising, modifying, transmission, storage and sharing of photographs and videos” and “cloud computing featuring software for the collection, editing, organising, modifying, transmission, storage and sharing of data and information”, which presumably encompasses all services of those types, including applicant’s narrower “Providing temporary use of non-downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment.” Id. Applicant’s and registrant’s overlapping goods and service are thus 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)). The parties’ goods and services have, moreover, 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)). Applicant’s and registrant’s overlapping goods and services are related.
Applicant’s software goods and services are, in light of the foregoing, related to registrant’s goods and services for likelihood of confusion purposes.
Conclusion
The applied-for mark SOLVE is confusingly similar to the registered SOLVE and PICSOLVE marks, when those marks are considered in their entireties, despite any additional wording and/or character stylization in the registered marks. Applicant’s goods and services are also related to the goods and services identified in the registrations. Registration for the applied-for mark is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the marks in U.S. Registration Nos. 5343758, 5352924, and 6010873.
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/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@uspto.gov
