To: | VIVO MOBILE COMMUNICATION CO., LTD. (twang@nilawfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88375746 - TELOS - ACIP0747 |
Sent: | October 17, 2019 01:36:29 PM |
Sent As: | ecom111@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 Attachment - 49 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88375746
Mark: TELOS
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Correspondence Address: 8140 Walnut Hill Lane, Suite 500
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Applicant: VIVO MOBILE COMMUNICATION CO., LTD.
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Reference/Docket No. ACIP0747
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.
This Office action is in response to applicant’s communication filed on September 25, 2019.
In a previous Office action dated June 21, 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. In addition, applicant was required to satisfy the following requirement: amend the identification of goods.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirement 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:
REFUSAL - LIKELIHOOD OF CONFUSION
This refusal applies to the smartphones and mobile phones only.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 2327739 and 5066643. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). See the previously attached registrations.
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 and/or services 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 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.
Applicant has applied for the mark TELOS in standard characters for use on, in pertinent part, “smartphones; mobile phones” in Class 9.
The registrant’s mark is TELOS in stylized text for use on “portable computers” in Class 9.
The registrant’s mark is T TELOS in stylized text with a design for use on, in pertinent part, “portable computers” in Class 9.
Similarity of the Marks
The applicant’s mark, TELOS, is identical to the registrant’s first mark, TELOS (Registration No. 2327739). Applicant asserts the applied-for standard character mark, TELOS, is not similar in appearance to the registrant’s first mark, TELOS (Registration No. 2327739) because the registered mark is in stylized text. However, a mark registered in standard characters provides the broadest protection of a textual mark in any lettering style, size, and color, whereas a special form drawing provides protection only for a specific depiction. See 37 C.F.R. §2.52(a)-(b); TMEP §§807.03(a), 807.04(a). Thus, not only is applicant’s literal element, TELOS, identical in appeare4nce to the registrant’s literal element, TELOS, the applicant’s standard character claim provides applicant with the ability to use the applied-for mark in the same stylized lettering as the registered mark. Thus, the literal elements are identical.
The applicant’s mark, TELOS, is also identical to the literal element in registrant’s second mark, T TELOS and design (Registration No. 5066643). It is noted that the “T” design element stands for TELOS and reinforces the first letter of TELOS. When evaluating a composite mark consisting of words and a design, such as T TELOS Registration No. 5066643, 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 and/or services. 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)). In the present case the dominant portion of registrant’s mark is TELOS (Registration No. 5066643) which is identical to the literal element in applicant’s mark. Thus, the design portion of registrant’s mark does not obviate the similarity between the two marks as applicant contends. Therefore, the marks convey the same commercial impression.
Relatedness of the Goods
The applicant intends to use the mark on smartphones and mobile phones and the registrants’ uses its marks on portable computers.
In this case, the registrations use broad wording to describe “portable computers,” which presumably encompasses all goods of the type described, including Applicant’s more narrow “smartphones.” 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). A smartphone is “a cell phone that works like a small computer, allowing you to access the internet, run software apps, read and send e-mails, etc.” See the previously attached dictionary definition. Further, see the newly attached articles from Computer Hope, ComputerWorld, Wikipedia, The Wall Street Journal, and Wired which all confirm that a smartphone is a type of computer. The article from Computer Hope indicates, “smartphones and tablets are indeed considered computers. A computer is really any device that accepts input from a user, performs calculations on that input, and provides an output to the user. Usually, with a smartphone and tablet input is provided using a touch screen interface and the output is seen on a screen.” The attached article from Wired indicates a belief that smartphones may be the only computer necessary for some people. The article from Computerworld further states, “as smartphones become more powerful and secure (with better biometric security), the demand for very expensive smartphones grows. However, with all that spending on smartphones, the appetite for a separate laptop diminishes. We already carry a supercomputer in our pockets.” Thus, the attached evidence indicates smartphones are a type of portable computer. Additionally, the attached evidence from Wikipedia and Webopedia indicate that smartphones are a class of mobile phones. Therefore, applicant’s “mobile phones” and the registrant’s portable computers are related because they provide the same functions and could be used in the same manner. Thus, applicant’s and registrant’s 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)).
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 Registrants’ goods are related.
Conclusion
REQUIREMENT - IDENTIFICATION OF GOODS
Please note, although the majority of the identification of goods requirement was satisfied in the response filed September 25, 2019 the requirement to remove a registered trademark from the identification of goods is maintained and continued.
Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). “Rechargeable batteries” would have been suggested below but this would result in a duplicate entry. Therefore, the entry, “mobile power banks, namely, rechargeable batteries” is removed from the suggested identification below.
Applicant may substitute the following wording, if accurate:
Class 9:
Smartphones; mobile phones; cell phone cases; covers for cell phones; protective films adapted for smartphones; stands adapted for mobile phones; headphones; headsets for mobile phones; selfie sticks for use with smartphones; selfie camera lenses for use with smartphone; power adapters; batteries, electric; rechargeable batteries; wireless headsets for smartphones; wireless chargers
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ASSISTANCE
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)
/Sean O'Tormey/
Sean O'Tormey
Examining Attorney
Law Office 111
(571) 272-3081
sean.otormey@uspto.gov
RESPONSE GUIDANCE