To: | THE OCKERS COMPANY (shortell@lambertpatentlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88390003 - TOUCHVIEW - 19-048-JH |
Sent: | May 18, 2020 06:41:51 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88390003
Mark: TOUCHVIEW
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Correspondence Address: |
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Applicant: THE OCKERS COMPANY
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Reference/Docket No. 19-048-JH
Correspondence Email Address: |
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FINAL OFFICE ACTION
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: May 18, 2020
This Office action is in response to applicant’s communication filed on April 14, 2020.
In a previous Office action dated January 27, 2020, 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, and Trademark Act Section 2(e)(1) for being merely descriptive.
The trademark examining attorney maintains and now makes FINAL these refusals in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES:
SECTION 2(D) REFUSAL - LIKELIHOOD OF CONFUSION
U.S. Registration No. 5790506 (“TOUCHVUE” for “computer monitors” in class 9.)
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
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.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the present case, the applicant’s mark is TOUCHVIEW in standard characters and the mark in the registration is TOUCHVUE. Applicant argues that these marks are sufficiently different in appearance as to avoid confusion. However, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Therefore, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods
In this case, the applicant’s goods are various display panels, touch screen displays, and associated circuitry. The registrant’s goods are “computer monitors.” These goods are highly related, as computer monitors generally consist of display panels and associated circuitry, as the previously attached evidence from Dell, Samsung, and Microsoft indicates. This same Internet evidence, consisting of screenshots from Dell, Samsung, and Microsoft, further establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark, through the same trade channels and that these are used by the same classes of consumers in the same fields of use and are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, the goods are considered related for likelihood of confusion purposes.
Applicant’s Arguments
Applicant compares the instant registration upon which refusal is based to another which was originally the basis for a refusal:
Notably, in its Response to the Non-Final Office Action filed Nov. 20, 2019, Applicant overcame a likelihood of confusion rejection based on registration no. 5116597. This previously cited registration was for the mark TOUCHVUE for software in international class 09, the identical mark, goods and class of the registration now being cited in support of refusal. (emphasis in original)
And:
The weakness of Registrant's mark is particularly apparent in view of previously cited third-party registration no. 5116597 for "TOUCHVUE" in international class 09 for use in connection with "human machine interface (HMI) software and remote control software." Previously cited registration no. 5116597 registered on January 10, 2017. The now-cited Registration for TOUCHVUE is identical to the mark that is the subject of registration no. 5116597 and both marks are registered in internal class 009 for software. (emphasis in original)
The examining attorney notes that the registration now being cited, 5790506, has been cited for its recitation of computer monitors, and computer monitors are not among the goods listed in registration no. 5116597, which only lists software. Thus, it is not correct to characterize the 5790506 registration and 5116597 registration as being for “the identical . . . goods.” They are not.
Applicant further argues that the registered mark is diluted, based on a listing of third-party registrations provided by applicant. Applicant has submitted a list of third-party registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Applicant further argues that the goods in the registration are really software as part of a suite of goods that registrant uses in the field of medical care, and that this is to be contrasted with applicant’s hardware goods:
The Registrant's goods are, in part, for medical software, and more specifically, highly sophisticated medical imaging software for displaying ultrasound imaging. As explained by Registrant in its advertising of the goods sold in connection with the cited registration, "TouchVue is an easier, more intuitive method of volume 3D volume manipulation than found on traditional ultrasounds." Exhibit C. Moreover, it is evident from Registrant's advertising that the TouchVue software operates in conjunction with several other products sold by Registrant, including "TrueVue" and "GlassVue" and the "EPIQ touch panel."
In contrast, Applicant' s goods are hardware alone and as previously explained, software cannot be purchased from Applicant. Moreover, Applicant's goods are not used for medical diagnostics. Applicant's goods are instead interactive displays and panels that are used for annotation, writing, and drawing in a similar manner to how a physical whiteboard might be used. Applicant's goods are advertised to companies, schools and academic institutions as classroom/visual aids.
Additionally, the goods (registrant’s computer monitors and applicant’s similar hardware goods – this refusal does not draw upon the software in the registration) 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.
Considering all of the above, the refusal under Trademark Act Section 2(d) is maintained and hereby made FINAL.
Applicant should also take note of the following refusal:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
In this case, applicant’s mark “TOUCHVIEW” immediately conveys information concerning a feature or characteristic of applicant’s goods. Applicant’s various screen displays are of course meant to be viewed as that is their purpose. Applicant’s displays are also intended to be “touched”, as is clear from applicant’s goods, which include “interactive touch screen displays.” Hence, both “touch” and “view” describe a feature of applicant’s goods as is demonstrated by applicant’s own description of those goods (e.g., “interactive touch screen displays”).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, TOUCHVIEW is simply a compounding of “touch” and “view”, and immediately conveys to consumers that the goods are to be both seen and touched, as is clear from the wording in the identification of goods in class 9.
Moreover, the previously attached evidence, consisting of screenshots of Guide to Trinity Music Workstation, Back Stage, and Scandvik (as available on Amazon.com), demonstrates that it is quite common for interactive screens or displays having a touch feature (which presumably includes various modules and circuitry to that end) to be referred to as “Touch View” displays or screens.
Considering all of the above, the refusal under Trademark Act Section 2(e)(1) is maintained and hereby made FINAL.
Advisory – Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant’s Arguments
Applicant had not provided any, but indicates that “upon overcoming all other reasons for refusal, Applicant will submit an allegation of use and amend to the Supplemental Register.”
For at least the foregoing reasons, the Section 2(e)(1) refusal is maintained and made FINAL.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/James Prizant/
Trademark Examining Attorney
Law Office 128
(571) 270-3068
James.Prizant@USPTO.GOV
RESPONSE GUIDANCE