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) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 88320541 |
LAW OFFICE ASSIGNED | LAW OFFICE 109 |
MARK SECTION | |
MARK | http://uspto.report/TM/88320541/mark.png |
LITERAL ELEMENT | SPOTLIGHT |
STANDARD CHARACTERS | YES |
USPTO-GENERATED IMAGE | YES |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) | |
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. |
|
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 009 |
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; 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 | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 402019003153 |
FOREIGN APPLICATION COUNTRY | Korea, South |
FOREIGN FILING DATE | 02/28/2019 |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 009 |
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; |
|
FINAL 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; 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) |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 402019003153 |
FOREIGN APPLICATION COUNTRY | Korea, South |
FOREIGN FILING DATE | 02/28/2019 |
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 SECTION | |
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 SECTION | |
RESPONSE SIGNATURE | /Robert J. Kenney/ |
SIGNATORY'S NAME | Robert J. Kenney |
SIGNATORY'S POSITION | Attorney of record, VA bar member |
SIGNATORY'S PHONE NUMBER | 7032058000 |
DATE SIGNED | 06/27/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Thu Jun 27 11:22:59 EDT 2019 |
TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20190627112259352475-8832 0541-620868c881fa664ccd41 db3867b22ee28b382b464ed8f dffd3abb1e3e8ffca71-N/A-N /A-20190627074925775137 |
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) |
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.