| To: | Urban Outfitters, Inc. (trademarks@morganlewis.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88381403 - KOTO - 061823.0093 |
| Sent: | 6/21/2019 4:28:21 PM |
| Sent As: | ECOM124@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
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U.S. APPLICATION SERIAL NO. 88381403
MARK: KOTO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Urban Outfitters, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/21/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5563218 (KOTOFEY), 5440560 (KOTOFEY), and 4680665 (KOTO). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant seeks to register the mark “KOTO” for “Information technology and audio-visual, multimedia and photographic devices; apparatus, instruments and cables for electricity; cameras; video cameras; cell phones; smartphones; mobile phones; tape recorders; wireless speakers; audio speakers; amplifiers; cassette players; CD players; CD storage racks; vinyl; turntables; phones accessories, namely, over-the-ear headphones; in-ear headphones; headphones; earbuds; amplifiers; camera cases; cases for photographic apparatus; cell phone cases; batteries; battery chargers; sleeves for laptops; protective sleeves for laptop computers; protective cases for smartphones; protective covers and cases for tablet computers; protective covers for smartphones; portable computer bags; blank USB flash drives; stands adapted for mobile phones; eyeglasses; sunglasses; frames for spectacles and sunglasses; cases for spectacles and sunglasses” in Class 9.
The registered marks “KOTOFEY” identify in part “3D spectacles; DVD players; Dispensers that count or measure output for use with tickets; coin-operated musical automata juke boxes; fire engines; answering machines; electrical adapters; accumulators, electric; accumulators, electric, for vehicles; accelerometers; actinometers; alidades; altimeters; ammeters; anemometers; anodes; antennas; anticathodes; Optical apertometers; high-frequency apparatus, namely, radio, radar detector ; testing apparatus not for medical purposes namely, apparatus for testing gas, liquids and solids; remote control apparatus for the remote control of industrial operations; electro-dynamic apparatus for the remote control of railway points; electro-dynamic apparatus for the remote control of signals; monitoring apparatus, electric, for monitoring flowmeters; sound recording apparatus; Global Positioning System GPS apparatus; distillation apparatus for scientific purposes; diffraction microscope; air analysis apparatus; apparatus to check franking, namely, optical postage readers; sound transmitting apparatus; Laboratory apparatus for fermentation, namely, laboratory equipment in the nature of incubators; breathing apparatus for underwater swimming; breathing apparatus, except for artificial respiration, namely, oxygen breathing units; apparatus and installations for the production of X-rays, not for medical purposes; cash registers; electric apparatus for commutation; intercoms; stills for laboratory experiments; movie projectors; radiological apparatus for industrial purposes, namely, optical inspection apparatus for industrial purposes; X-ray apparatus not for medical purposes; blueprinting machines; flashing safety lights and luminous signals; stereoscopes; telephone apparatus; facsimile machines; phototelegraphy apparatus; lighting apparatus, electric, for igniting at a distance, namely, Keyless entry system and keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and keyfob with electronic signal transponder; acid hydrometers; salinometers; acidimeters for batteries; aerometers; beacons, luminous; battery jars containing batteries; barometers; anode batteries; galvanic batteries; batteries for lighting; solar batteries; solar panels for the production of electricity; batteries, electric; balances, namely, steelyards; betatrons; binoculars; electronic tags for goods; lens hoods; magnetic tape units for computers; computer memory devices; firehose nozzles; encoded identification bracelets, magnetic; safety tarpaulins; bullet-proof clothing; signalling buoys; life buoys; marking buoys; directional compasses; vacuum gauges; electrolysers; variometers; Vernier slide caliper; scales; letter scales; weighbridges; precision balances; levelling staffs, namely, surveying instruments; camcorders; video baby monitors; blank video cassettes; video telephones; video screens; viewfinders, photographic; electric sockets, plugs, contacts and connections; micrometer screws for optical instruments; viscosimeters; circuit closers; wavemeters; voltmeters; mechanical signs; signs, luminous; switch boxes; current rectifiers; gas testing instruments; gasometers; galvanometers; hands-free kits for telephones; heliographic apparatus; hygrometers; hydrometers; weights; peepholes magnifying lenses for doors; hologram apparatus; plotters; loudspeakers; sounding leads, namely, phone extension leads; plumb bobs; range finders; densimeters; densitometers not for medical use; optical goods, namely, optical lenses; detectors, namely, motion detectors; smoke detectors; counterfeit false coin detectors; photographic transparencies; slide projectors; photography diaphragms; dictating machines; dynamometers; light-emitting diodes (LED); floppy disk drives; sound recording discs, namely, blank DVDs; blank magnetic disks; blank optical discs; circular slide rules; disk drives for computers; juke boxes for computers; DNA chips; electronic notice boards; bullet-proof waistcoats vests; lifejackets; identification threads for electric wires; nose clips for divers and swimmers; locks, electric; electric sound alarm bells; electric door bells; signal bells; warning bells; acoustic conduits; mirrors for inspecting work; road signs, luminous or mechanical; marine depth finders; ultrasound probes for scientific purposes; electric buzzers; needles for record players; tape measures; pressure measuring apparatus; simulators for the steering and control of vehicles; electricity inverters; pressure indicators; temperature indicators; incubators for bacteria culture; measuring instruments, namely, Instruments for measuring length, tool measuring instruments; cosmographic instruments, namely, telescopes; mathematical instruments, namely, calculators, graphing calculators; levelling instruments, namely, levelling rods, bubble levels; instruments containing eyepieces, namely, astrophotography cameras and microscopes; surveying instruments; azimuth instruments, namely, surveying instruments; interfaces for computers; ionization apparatus for scientific or laboratory use, not for the treatment of air or water; spark-guards, namely, electrical surge arresters; coaxial cables; fiber optic cables; cables, electric; pocket calipers for measuring; slide calipers; screw-tapping gauges; calculating machines; pocket calculators; decompression chambers; cinematographic cameras; life-saving capsules for natural disasters; electronic pens for use with visual display units; holders for electric coils; identity cards, magnetic; video game cartridges; toner cartridges, unfilled, for printers and photocopiers; memory cards for video game machines; encoded magnetic identity cards; riding helmets; protective helmets; carriers for dark plates photography, namely, photography darkroom lamps; automated teller machines (ATM); cathodes; choking coils for use in electrical apparatus; spools for cameras; coils, electric; electromagnetic coils; cinematographic film, exposed; computer keyboards; solenoid valves being electromagnetic switches; wire connectors; encoded key cards; electronic book readers; electronic agendas; push buttons for warning bells; mouse pads; magnetic encoders; anti-glare motorcycle visors; collectors, electric, namely, electronic monitors to collect operational data and settings, including temperature data and settings, from HVAC equipment to ensure proper functioning, calibrated rainwater collection containers for scientific purposes, mobile computing and operating platforms consisting of data transceivers, wireless networks and gateways for collection and management of data; calibrating rings for calibrating optical emission spectrometers, luminous signs, pressure gauges, commutators, electronic switches for timers, signal bells, sirens, variometers for the aforesaid goods; thermostat valves for vehicle thermostats; blank magnetic data carriers; dosage dispensers, namely, machines for dispensing pre-determined dosages of medication, remote control apparatus, namely, remote controls for radios, televisions, stereos, boilers, electronic thermostatic heads; operating apparatus and installations for technical building equipment, namely, building management systems comprising sensors for wireless temperature measurement and flow measurement; protective suits for aviators; commutators; audio-video compact discs featuring music and movies; compact discs read-only memory featuring music and movies; comparators; marine compasses; computers; laptop computers; tablet computers; notebook computers; condensers being capacitors; contacts, electric; wind socks for indicating wind direction; traffic safety cones; electrical branch connection boxes; distribution boxes; junction boxes; battery boxes; cabinets for loudspeakers; diving suits; galena crystals detectors for use in electronics; reflecting discs for wear, for the prevention of traffic accidents; covers for electric outlets; logs measuring instruments, namely, calipers for measuring logs; lasers, not for medical purposes; lactodensimeters; lactometers; vacuum tubes for radios; flashlights for photography; darkroom lamps for photography; thermionic tubes; amplifying vacuum tubes for radios; head cleaning tapes for video records; blank magnetic tapes; blank videotapes; surveying chains; safety fire escape ladders; graduated rulers; slide-rules; opticalcondensers; contact lenses; correcting optical lenses; optical lenses; electricity conduits; sounding lines, namely, depth gauges and marine depth finders; measuring spoons; magnifying glasses; thread counters; magnets; decorative magnets; close-up lenses; crash test dummies; resuscitation mannequins of use as teaching apparatus; mouse computer peripheral; pressure gauges; divers' masks; solderers' helmets; protecting masks; electricity wires and cables; voting machines; money counting and sorting machines; electronic apparatus for testing compression, strength, hardness and tensile characteristics of industrial materials; furniture especially made for laboratories; megaphones; portable media players; diaphragms acoustics; diaphragms for scientific apparatus; metal detectors for industrial or military purposes; metronomes; carpenters' rules; measuring rules ; dressmakers' measures, namely, seam gauges; mechanisms for coin-operated apparatus; mechanisms for money counting apparatus; coin-operated mechanisms for television sets; shutter releases for cameras; micrometers; microprocessors; microscopes; microtomes; microphones; modems; lightning conducting rods; computer monitors; computer software programs for monitoring personal health; computer terminals; junction sleeves for electric cables; teeth protectors for dental purposes; temperature indicator labels, not for medical purposes; knee-pads for workers; headphones; surveyors' levels; sound recording carriers, namely, blank magnetic data carriers; magnetic data media, namely, disk drives; optical data media, namely, Blank optical data carriers; sheaths for electric cables; identification sheaths for electric wires; weighing machines; computer hardware; punched card machines for offices; life-saving apparatus and equipment, namely, life-saving rafts; shoes for protection against accidents, irradiation and fire; lenses for astrophotography; objectives optical lenses; egg-candlers; fire extinguishers; electrified fences; electricity limiters; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; asbestos clothing for protection against fire; protective clothing especially made for use in laboratories; ozonisers being ozonators; octants; eyepieces, namely, microscopes; ohmmeters; wrist rests for use with computers; eyeglass frames; oscillographs; plumb lines; scientific and technical apparatus, namely, optical mirrors; eyeglasses; sunglasses; goggles for sports; signaling signs, luminous and mechanical; radio pagers; pince-nez; electronic pocket translators; telecommunications transmitters; telephone transmitters; transmitters of electronic signals; switches, electric; periscopes; gloves for divers; gloves for protection against accidents; gloves for protection against X-rays for industrial purposes; asbestos gloves for protection against accidents; furnaces for laboratory use; pipettes; pyrometers; planimeters; plane tables being surveying instruments; plates for batteries; wafers for integrated circuits; printed circuit boards; compact disc players; cassette players; sound recording strips in the nature of sound recording apparatus and instruments; X-ray films, exposed; photographic films, exposed; life-saving rafts; laboratory trays; digital signs; semi-conductors; polarimeters; fire pumps; measuring glassware; life belts; fuses; circuit breakers; converters, electric; telerupters , namely, remote circuit breaker control switch operators; food analysis apparatus, namely, luminometer for testing food; diagnostic apparatus, not for medical purposes, namely, diagnostic apparatus for testing electrical systems function, quantity and quality of output; distance recording apparatus, namely, pedometers; distance measuring apparatus; speed measuring apparatus photography, namely, speedometers; appliances for measuring the thickness of leather; apparatus for measuring the thickness of animal skins; speed checking apparatus for vehicles, namely, speed monitors, speed controllers, speed detectors, and speed indicators, namely, speedometers, tachometers; teaching apparatus, namely, film projector, slide projector; time recording apparatus; hemline markers, namely, graduated rulers; measuring apparatus, namely, bevels; measuring devices, electric, namely, fluorometers; apparatus and instruments for astronomy, namely, telescopes; surveying apparatus and instruments, namely, echo sounders and side scan sonar equipment; weighing apparatus and instruments; nautical apparatus and instruments, namely, navigation apparatus for boats and vehicles in the nature of on-board computers; electric navigational instruments; optical apparatus and instruments, namely, optical inspection apparatus; chemistry apparatus and instruments, namely, flasks for laboratory use, gas mixers for laboratory use, laboratory chemical reactors; apparatus and instruments for physics, namely, scales, spectrometers; boiler control instruments; meteorological instruments; naval signaling apparatus, namely, buoys and flares and decoys, all for signaling purposes; observation instruments, namely, telescopes; navigation apparatus for vehicles in the nature of on-board computers; satellite navigational apparatus, namely, global positioning system; electric voltage regulators; precision measuring apparatus, namely, precision theodolites, precision balances ; audio- and video-receivers; prisms; computer software applications, downloadable, namely, industrial process control software; document printers for use with computers; retorts' stands , namely, stands for laboratory glassware; apparatus for changing record player needles, namely, tone arms for record players; drainers for use in photography, namely, drying apparatus for photography prints; cleaning apparatus for sound recording discs, namely, magnetic head cleaners; fire beaters, namely, fire blankets and fire extinguishers; telescopic sights for firearms; telescopic sights for artillery; laboratory equipment and supplies, namely, test tubes; pressure indicator plugs for valves; magnetic wires; telegraph wires; telephone wires; wires, electric; conductors, electric; copper wire, insulated; fuse wire; computer programs, recorded, namely, Industrial process control software; computer game software; computer programs, namely, downloadable Industrial process control software; computer operating programs, recorded; record players; processors central processing units; rods for water diviners; electronic publications, downloadable, namely, magazines and books in the field of general consumer merchandise; electricity distribution consoles; electricity control panels; radar apparatus; masts for wireless aerials; transmitting sets comprised of telecommunication transmitters; radios; vehicle radios; sprinkler systems for fire protection; frames for photographic transparencies; projection screens for photoengraving; walkie-talkies; voltage surge protectors; voltage regulators for vehicles; stage lighting regulators; electric light dimmers; speed regulators for record players; cell switches for electricity; washing trays photography; marking gauges for joinery purposes; time switches, automatic; relays, electric; safety restraints, other than for vehicle seats and sports equipment, namely, safety harnesses other than for vehicles or sports purposes; X-ray photographs, other than for medical purposes; rheostats; respirators for filtering air, not for artificial respiration; retorts for use in high temperature chemical reactions; refractometers; refractors in the nature of refractometers; grids for batteries; speaking tubes; horns for loudspeakers; saccharometers; optical fibers; light conducting filaments; traffic-light apparatus being signaling devices; dog whistles; signalling whistles; sextants; electric inductors; safety nets; nets for protection against accidents; fire alarms; vehicle traffic signals, luminous or mechanical; sirens; scanners for use as data processing equipment; blank integrated circuit cards; blank smartcards; smartphones; connections for electric lines; couplings, electric; electric connectors; sonars; sound locating instruments, namely, sound level meters; lighting ballasts; resistances, electric; spectrograph apparatus; spectroscopes; speed indicators; alcoholmeters; satellites for scientific purposes; protection devices for personal use against accidents, namely, nets for protection against accidents, gloves for protection against accidents; audiovisual teaching apparatus, namely, audiovisual receivers; radiotelegraphy sets; radiotelephony sets; spectacle lenses; anti-glare glasses; optical lenses made from glass; personal stereos; stereoscopes; stands for photographic apparatus; stroboscopes; fire boats; sulfitometers; bags adapted for laptops; drying racks photography; spherometers; integrated circuits; printed circuits; Geiger counters; parking meters; kilometer recorders for vehicles, namely, onboard computers for recording mileage; revolution counters, namely, tachometers; abacuses; egg timers being sandglasses; taximeters; ear plugs for divers; tachometers; televisions; automatic telegraphs apparatus; telescopes; teleprompters; teleprinters; cordless telephones; cellular phones; theodolites; thermometers, not for medical purposes; thermostats; thermostats for vehicles; crucibles for laboratory use; tone arms for record players; totalizators, namely, adding machines; transistors; transponders; protractors;step-up transformers; transformers; vehicle breakdown warning triangles; triodes; battery starter cables for motors; discharge tubes, electric, other than for lighting; capillary tubes , namely, laboratory glassware; neon signs; Pitot tubes; X-ray tubes not for medical purposes; telephone receivers; gauges, namely, speedometers, fuel gauges, and temperature gauges; quantity indicators, namely, temperature indicators, water level indicators, speed indicators; automatic indicators of low pressure in vehicle tires; gasoline gauges; water level indicators; electric loss indicators, namely, electronic monitors and monitor modules for monitoring electric current and electrical signals; light-emitting electronic laser pointers; slope indicators; levels instruments for determining the horizontal; mercury plumb levels; spirit levels; urinometers; amplifiers; particle accelerators; electric installations for the remote control of industrial operations; baby monitors; steering apparatus, namely, simulators for the automatic steering of vehicles; balancing apparatus, namely, balances for steelyards, precision balances; video recorders; sound reproduction apparatus; invoicing machines, namely, cash registers and credit card readers; tape recorders; gloves for protection against X-rays for industrial purposes; railway traffic safety appliances, namely, railway signals, electro-dynamic apparatus for the remote control of railway points; data processing apparatus; oxygen masks for non-medical use; theft prevention installations, electric, , namely, alarm sensors, electronic door alarms; film cutting apparatus, namely, editing machines for cinematographic films; drying apparatus for photographic prints; optical character readers; centering frames for photographic transparencies; machines for dispensing pre-determined dosages of medicine; battery chargers; chargers for electric batteries; acoustic alarms; sounding apparatus and machines, namely, sound recording apparatus; editing appliances for cinematographic films; cathodic anti-corrosion apparatus, namely, apparatus for coating of metal in the nature of anodes and cathodes; couplers being data processing equipment; anti-theft warning apparatus, not for vehicles; computer peripheral devices; anti-interference devices, namely, filters for radio interference suppression; demagnetizing apparatus for magnetic tapes; acoustic couplers; acoustic alarms; fog signals, non-explosive; whistle alarms; adding machines; optical readers being data processing equipment; bar code readers; heat regulating apparatus, namely, control valves for regulating the flow of gases and liquids; photographic, electrostatic and thermic photocopiers; downloadable ring tones for mobile phones; downloadable image files containing artwork, text, audio, video, games and Internet Web links relating to sporting and cultural activities; downloadable music files; video discs and video tapes with recorded animated cartoons; filters for non-medical respiratory masks; filters for ultraviolet rays, for photography; filters for ultra violet rays for photography; blank USB flash drives; magic lanterns; signal lanterns in the nature of rotating lights; optical lamps; cameras for photography; portable photography equipment, namely, glazing apparatus for photographic prints; camera and lens shutters for photography; photography darkroom lamps; photometers; photographic flash-bulbs; digital photo frames; Photography enlarging apparatus, namely, magnifying lenses; photovoltaic cells; containers for contact lenses; eyeglass cases; containers specially adapted for microscope slides; cases especially made for photographic apparatus and instruments; chromatography apparatus for laboratory use; chronographs for use as specialized time recording apparatus; laboratory centrifuges; eyeglass chains; cyclotrons; compasses for measuring; frequency meters; time clocks being time recording devices; Petri dishes; sleeves for laptops; fire blankets; chips, namely, integrated circuits; jigs being measuring instruments; pedometers; meteorological balloons; electrified conductor rails for mounting spot lights; asbestos protection screens for firemen; fire hose; protective helmets for sports; cell phone straps; eyeglass cords; tripods for cameras; switchboards; distribution transformer boards for electricity; workmen's protective face-shields; projection screens; radiology protection screens for industrial purposes; fluorescent screens; projection screens for photography; photographic exposure meters; electrical ducts; galvanic cells; epidiascopes; ergometers not for medical purposes; armatures for use in electrical apparatus” in Class 9.
The registered mark “KOTO” identifies “On-line retail gift shops; Retail gift shops; On-line retail store services featuring home decor, functional home accessories and electronic gadgets” in Class 35.
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 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 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.
Similarity of the Marks
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).
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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
Although the registered marks appears in stylized form and with a design element, applicant’s mark appears in standard characters and therefore could appear in a similar manner. 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). Thus, 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”).
In this case, the applicant’s mark, KOTO, creates a similar overall commercial impression to the cited registered marks, KOTOFEY, because the applicant’s marks appears in its entirety as the initial dominant wording of the registered marks. Further, in the mark that contains Russian, the wording KOTO appears in English script and as such would be more clearly identifiable to a US consumer.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
In the case of KOTOFEY, the registration uses broad wording to describe “cinematographic cameras” “telephone apparatus”, “loudspeakers”, “tape recorders”, “amplifiers”, “cassette players”, “compact disc players”, “record players”, “cases especially made for photographic apparatus and instruments” , “eyeglass cases”, “bags adapted for laptop computers”, “eyeglasses”, “sunglasses”, “electric cables”, “blank USB flash drives”, and “chargers for electric batteries”, and this wording either encompasses applicant’s goods or are identical to applicant’s goods: “apparatus, instruments and cables for electricity; cameras; video cameras; cell phones; smartphones; mobile phones; tape recorders; wireless speakers; audio speakers; amplifiers; cassette players; CD players; vinyl; turntables; camera cases; cases for photographic apparatus; cell phone cases; batteries; battery chargers; sleeves for laptops; protective sleeves for laptop computers; protective cases for smartphones; protective covers and cases for tablet computers; protective covers for smartphones; portable computer bags; blank USB flash drives; stands adapted for mobile phones; eyeglasses; sunglasses; frames for spectacles and sunglasses; cases for spectacles and sunglasses”. 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, 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 registrant’s goods are related.
Further, regarding the registered mark KOTO, the compared 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).
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
For these reasons, consumers are likely to encounter the parties’ goods and services in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods and services provided under the marks. Accordingly, registration is refused under Trademark Act Section 2(d).
Applicant must clarify some of the wording in the identification of goods because it is indefinite or overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03.
The applicant insufficiently describes the following goods in Class 9:
Applicant may substitute the following wording, if accurate:
Class 9: Information technology and audio-visual, multimedia and photographic devices, namely, {indicate type}; apparatus and instruments for electricity, namely, {indicate type, e.g., logic analyzers}; cables for electricity; cameras; video cameras; cell phones; smartphones; mobile
phones; tape recorders; wireless speakers; audio speakers; amplifiers; cassette players; CD players; CD storage racks; vinyl musical recordings; turntables being
record players; phones accessories, namely, over-the-ear headphones; in-ear headphones; headphones; earbuds; amplifiers; camera cases; cases for photographic apparatus; cell phone cases;
batteries; battery chargers; sleeves for laptops; protective sleeves for laptop computers; protective cases for smartphones; protective covers and cases for tablet computers; protective covers for
smartphones; portable computer bags; blank USB flash drives; stands adapted for mobile phones; eyeglasses; sunglasses; frames for spectacles and sunglasses; cases for spectacles and
sunglasses
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.
Response Guidelines
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.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
