Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88320541 SPOTLIGHT(Standard Characters, see http://uspto.report/TM/88320541/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

2(d) likelihood of confusion: 

Applicant's SPOTLIGHT mark is refused registration under section 2(d) for use with:

Smartphones; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones, mobile phones and Personal Digital Assistants (PDA); Apparatus for recording, transmission or reproduction of sound and images; Application software for smartphone cameras, namely, application software that allows users to take selfies by adding light from any angle; Displays for mobile phones, namely, LED displays for mobile phones, OLED (Organic Light Emitting Diode) displays for mobile phones, liquid crystal displays for mobile phones and video displays for mobile phones; Cameras for mobile phones; Batteries for mobile phones; Wireless headsets for use with mobile phones, smartphones, computers and tablet computers; Application software for smartphone cameras, namely, software for controlling the operation of smartphone cameras; Application software for smartphone camera light, namely, application software that allows users to control shadows and light effect of photographs; Application software for managing the operation of smartphones; Application software for recognizing images and controlling functions of smartphone camera light; Camera lenses for mobile phones; Auto light sensors; Flashlights for photograph; Flashlights for smartphone cameras; Light sensors

because of a likelihood of confusion with the mark SPOTLIGHT in Reg. No. 4669705 for use with “Downloadable computer software for uploading, accessing, posting, displaying, and sharing electronic media and information via the Internet and other communication networks; Downloadable computer application software for mobile uploading, accessing, posting, and viewing of digital content.”

Applicant respectfully submits there is no likelihood of confusion because of the unrelatedness of the parties’ goods.

“The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace.” TMEP § 1402.03(d).  The Trademark Trial and Appeal Board has rejected the premise that all computer hardware, software and internet services are "closely related" when it noted that:

"[T]here must be some similarity between the goods and services beyond the fact that each involves the use of computers."

See Reynolds and Reynolds Co. v. I.E. Systems. Inc., 5 U.S.P.Q. 2d 1749, 1751 (T.T.A.B. 1987) (accounting-related computer hardware, software and supplies sold under ACCU-prefixed marks "sufficiently different" from ACCULINK software kit then licensed primarily to manufacturers of microprocessors to avoid likelihood of confusion); see also Electronic Data Systems Corp. v. EDSA Micro Corp., 23 U.S.P.Q. 2d 1460, 1463 (T.T.A.B. 1992). Likewise, the fact the two parties provide computer programs in and of itself "does not establish a relationship between good or services such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks." See Electronic Data Systems. Corp., 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992) (Electronic Data Systems Corp. sold products and services under the names EDS Link, EDMD Electronic Document Management and Distribution and EDS Net whereas defendant used the mark EDSA).

There is no per se rule that goods or services sold in the same field or industry are similar or related for purposes of likelihood of confusion. See Cooper Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983); Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (reversing likelihood of confusion cancellation of LLOYD’S for barbecued meats based on LLOYD’s for restaurant services).

In the present case, registrant’s software is defined specifically and narrowly, i.e., software for uploading, accessing, posting, displaying, sharing, and viewing electronic media and digital content. Applicant’s goods, on the other hand, pertain to smartphones and software for controlling the functionality of smartphone cameras. The parties’ goods are not of a type that consumers reasonably may expect to emanate from a single source under the same mark. The goods will travel through different channels of trade and consumers are unlikely to encounter both marks at the same time under circumstances where confusion reasonably may occur. Thus, the parties’ goods are unrelated and there is no likelihood of confusion.  See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting “there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source” though both were offered under the COACH mark); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same marks); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by).

Withdrawal of the 2(d) likelihood of confusion is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Smartphones; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones, mobile phones and Personal Digital Assistants (PDA); Apparatus for recording, transmission or reproduction of sound and images; Application software for smartphone cameras, namely, application software that allows users to take selfies by adding light from any angle; Displays for mobile phones, namely, LED displays for mobile phones, OLED (Organic Light Emitting Diode) displays for mobile phones, liquid crystal displays for mobile phones and video displays for mobile phones; Cameras for mobile phones; Batteries for mobile phones; Wireless headsets for use with mobile phones, smartphones, computers and tablet computers; Application software for smartphone cameras, namely, software for controlling the operation of smartphone cameras; Application software for smartphone camera light, namely, application software that allows users to control shadows and light effect of photographs; Application software for managing the operation of smartphones; Application software for recognizing images and controlling functions of smartphone camera light; Camera lenses for mobile phones; Auto light sensors; Flashlights for photograph; Flashlights for smartphone cameras; Light sensors
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Korea, South application number 402019003153 filed 02/28/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Smartphones; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones, mobile phones and Personal Digital Assistants (PDA); Apparatus for recording, transmission or reproduction of sound and images; Application software for smartphone cameras, namely, application software that allows users to take selfies by adding light from any angle; Displays for mobile phones, namely, LED displays for mobile phones, OLED (Organic Light Emitting Diode) displays for mobile phones, liquid crystal displays for mobile phones and video displays for mobile phones; Cameras for mobile phones; Batteries for mobile phones; Wireless headsets for use with mobile phones, smartphones, computers and tablet computers; Application software for smartphone cameras, namely, software for controlling the operation of smartphone cameras; Downloadable application software for smartphone cameras, namely, software for controlling the operation of smartphone cameras; Application software for smartphone camera light, namely, application software that allows users to control shadows and light effect of photographs; Application software for managing the operation of smartphones; Application software for recognizing images and controlling functions of smartphone camera light; Downloadable application software for recognizing images and controlling functions of smartphone camera light; Camera lenses for mobile phones; Auto light sensors; Flashlights for photograph; Flashlights for photograph, namely, lights for use with computer cameras and video cameras; Flashlights for smartphone cameras; Light sensorsClass 009 for Smartphones; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones, mobile phones and Personal Digital Assistants (PDA); Apparatus for recording, transmission or reproduction of sound and images; Application software for smartphone cameras, namely, application software that allows users to take selfies by adding light from any angle; Displays for mobile phones, namely, LED displays for mobile phones, OLED (Organic Light Emitting Diode) displays for mobile phones, liquid crystal displays for mobile phones and video displays for mobile phones; Cameras for mobile phones; Batteries for mobile phones; Wireless headsets for use with mobile phones, smartphones, computers and tablet computers; Downloadable application software for smartphone cameras, namely, software for controlling the operation of smartphone cameras; Application software for smartphone camera light, namely, application software that allows users to control shadows and light effect of photographs; Application software for managing the operation of smartphones; Downloadable application software for recognizing images and controlling functions of smartphone camera light; Camera lenses for mobile phones; Auto light sensors; Flashlights for photograph, namely, lights for use with computer cameras and video cameras; Flashlights for smartphone cameras; Light sensors
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 402019003153 filed 02/28/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
CLARIFICATION OF FILING/REGISTRATION BASIS: Applicant responds that it intends to rely upon both the intent-to-use filing basis under Section 1(b), as well as the Section 44 basis. Applicant notes that the foreign registration has not issued yet, and requests that the application be suspended pending the completion of the prosecution of the S. Korean priority application no. 40-2019-0031534. REMARKS: Applicant has submitted argument in response to the 2(d) likelihood of confusion refusal, amended the identification of goods, and clarified the registration/filing basis herein. There being no other issues raised in the Office Action, applicant believes that the present application will be in condition to be approved for publication once a registration basis is perfected. An early Notice of Publication thereafter is respectfully requested. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Robert J. Kenney at (703) 205-8000 in the Washington, D.C. area.


SIGNATURE(S)
Response Signature
Signature: /Robert J. Kenney/     Date: 06/27/2019
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 7032058000

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88320541
Internet Transmission Date: Thu Jun 27 11:22:59 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201906271122593
52475-88320541-620868c881fa664ccd41db386
7b22ee28b382b464ed8fdffd3abb1e3e8ffca71-
N/A-N/A-20190627074925775137