To: | TCL Corporation (abufalino@vedderprice.com) |
Subject: | U.S. Trademark Application Serial No. 88335076 - TCL A1 - 53080000001 |
Sent: | November 01, 2019 05:28:53 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88335076
Mark: TCL A1
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Correspondence Address:
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Applicant: TCL Corporation
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Reference/Docket No. 53080000001
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 01, 2019
This Office action is in response to applicant’s communication filed on October 8, 2019.
In a previous Office action dated May 25, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, U.S. Registration No. 4586504. In addition, applicant was required to satisfy the following requirements: amend the identification of goods, and satisfy the multiple-class application requirements. Further, applicant was advised of potential conflicts with prior-filed applications, U.S. Application Serial Nos. 88248680, 88248689, 88248713, and 88248724.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification of goods, and satisfy the multiple-class application requirements. See TMEP §§713.02, 714.04.
In addition, U.S. Application Serial Nos. 88248680, 88248689, 88248713, and 88248724 have been abandoned. Therefore, the advisory regarding the potential conflicts with these prior-filed applications is withdrawn. See TMEP §§713.02, 714.04.
Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is TCL A1 (in standard character form) for “Communications apparatus, namely, mobile telephones; telephones; mobile phones; smart phones; cell phones; cases for mobile phones, smart phones and tablet computers” in International Class 9.
Registrant’s mark is A1 (in stylized form) for goods and services including “data processing equipment, computers; portable computers; computer accessories relating to video and computer games, namely, joysticks, wireless controllers for playing video and computer games, microphones; computer peripheral apparatus; computer docking stations; computer hardware; mice; mouse mats; keyboards; computer housings; headsets for communication; headphones; audio speakers for computer; computer and video game software; central processing units (processors); motherboards; graphic cards; computer screens; power units in the nature of batteries; computer game software; downloadable video games and computer game software;...all aforementioned goods except within the field of telecommunication and except for vehicles” in International Class 9.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. 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
Applicant’s mark is TCL A1 and registrant’s mark is A1. Applicant argues that applicant’s mark, when considered as a whole, gives a different commercial impression from registrant’s mark in part because applicant argues that “TCL” has a more dominant commercial impression given that it appears first in applicant’s mark and, according to applicant, is famous.
Indeed, 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).
However, adding a house mark, such as “TCL”, to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar because they share the wording “A1” and consumers are likely to see registrant’s mark as a shortened version of applicant’s mark and believe the marks to be from the same family of marks. The Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s goods, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods. In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).
Although registrant’s mark contains stylization, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, applicant’s mark and registrant’s mark share the same commercial impression and are confusingly similar.
Comparison of Goods
The goods 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).
In this case, the registration uses broad wording to describe “data processing equipment, computers,” which presumably encompasses all goods of the type described, including applicant’s more narrow “tablet computers.” 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, these goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
In connection with the relatedness of the goods, applicant argues that there is no likelihood of confusion because the goods of applicant and registrant are different. Specifically, applicant argues that registrant’s identification of goods have expressly excluded telecommunications goods. However, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. As shown by the previously attached Internet evidence from the websites of Samsung, LG, and Sony, as well as the attached Internet evidence from the websites of Acer, Apple, Asus, Google, Microsoft and Sony, the goods of registrant and the goods identified by applicant are commonly provided to consumers by the same manufacturer. Thus, a consumer is likely to believe that the goods identified by applicant and bearing the applied-for mark come from the same source as the goods of registrant that bear registrant’s mark.
Additionally, the goods 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 are related.
Applicant’s Remaining Arguments
First, applicant argues that applicant has used “its famous mark TCL” since at least 1985. To the extent such an argument is construed as a priority of use argument, a claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv).
Second, applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “A1” or “AONE” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. These registrations appear to be for goods that are predominantly different from or unrelated to those identified in applicant’s application. Further, the “AONE” marks are distinguishable because it is not clear that a consumer would necessarily perceive these marks as the equivalent of “A1”. Further, the sole “A1” mark provided by applicant in support of the dilution argument, U.S. Registration No. 2080671 (A1), is for unrelated goods, namely, electronic and computer components for motor vehicles. Lastly, none of the third-party registrations provided by applicant are for consumer electronic goods. As shown by the previously attached Internet evidence from the websites of Samsung, LG, and Sony, as well as the attached Internet evidence from the websites of Acer, Apple, Asus, Google, Microsoft and Sony, applicant and registrant’s consumer electronic goods are highly related.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording A1 is weak or diluted.
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of the goods. Therefore, the refusal to register applicant’s mark under Section 2(d) of the Trademark Act is now made FINAL.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Pauline Ha/
Examining Attorney
Law Office 115
(571) 272-5005
pauline.ha@uspto.gov
RESPONSE GUIDANCE