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. 88410147
Mark: VIVIDCOLOR EYESAFE
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Correspondence Address: |
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Applicant: CardWare, Inc.
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Reference/Docket No. N/A
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 18, 2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied for the mark VIVIDCOLOR EYESAFE, in standard character form, for use in connection with the following goods:
Class 11: LED (light emitting diode) lighting fixtures; Lighting fixtures; Electric luminaires; LED lighting fixtures for indoor and outdoor lighting applications; LED luminaires; Strip lighting for indoor use
Registrant owns registrations for the mark EYESAFE, in standard character form for use in connection with the following goods:
Class 9: (U.S. Reg. No. 5487272) Display screen filters adapted for use with computer monitors, smartphone screens, cell phone screens, television screens, tablet computer screens and virtual reality headsets; optical screen filters; optical filters; color filters for use with display screens; computer screen filters; filters for ultraviolet rays; filters for blue wavelength light; optical glass; computer screens; video screens; display screens; tablet computer screens; virtual reality headset screens; fitted plastic films for covering and protecting the screens of electronic apparatus, namely, computer monitors, smartphones, cell phones, televisions, tablet computers and virtual reality headsets.
Class 9: (U.S. Reg. No. 4792271) Protective display screen covers adapted for use with computer monitors, smartphone screens, cell phone screens, television screens, and tablet computer screens; eye glasses; sunglasses; and contact lenses
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.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the marks VIVIDCOLOR EYESAFE and EYESAFE are confusingly similar because they share the same word “EYESAFE”.
Accordingly, applicant’s and registrant’s marks are similar in sound, appearance, connotation, and commercial impression. As such, the marks are confusingly similar for likelihood of confusion purposes.
Relatedness of the Goods
In this case, the applied-for lighting goods are related to the registered filters for electronics because they are commonly offered under the same brand name. For example, the attached Internet evidence, consisting of screenshots of webpages from entities offering the applied-for lighting and the registered filters, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See http://www.3m.com/, http://us.rosco.com/en, http://www.amazon.com/Continuous-Portable-Photography-Lighting-Filters/dp/B079BPB9HR, and http://www.voltlighting.com/. 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).
Conclusion
The similarity between applicant and registrant’s marks and goods is likely to cause consumers to be confused, mistaken, or deceived as to the source of the goods. Accordingly, applicant’s mark must be refused registration under Section 2(d) of the Trademark Act.
Applicant should note the following prior-filed application.
PRIOR-FILED APPLICATIONS ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Applicant applied for the mark VIVIDCOLOR EYESAFE for “OLED (Organic light emitting diode) display panels; Downloadable lighting control software for use in commercial and industrial facilities; Downloadable computer software for controlling the operation of audio and video devices; Electronic control gears (ECGs) for LED lamps and light fixtures; Electronic display interfaces; Light emitting diode (LED) displays; Liquid crystal display (LCD) monitors; Liquid crystal display (LCD) televisions” in Class 11.
Here, VIVIDCOLOR EYESAFE merely describes that applicant’s lighting goods feature strong and vibrant colors that do not cause harm to the eyes.
Specifically, “VIVID” means “of a color: very strong: very high in chroma.” See http://www.merriam-webster.com/dictionary/vivid. In the context of the applied-for goods, this wording merely describes that applicant’s goods feature very strong colors. In addition, “COLOR” means “a phenomenon of light (such as red, brown, pink, or gray) or visual perception that enables one to differentiate otherwise identical objects; a specific combination of hue, saturation, and lightness or brightness.” See http://www.merriam-webster.com/dictionary/color. In the context of the applied-for goods, this word merely describes that applicant’s lighting goods feature various combinations of hue, saturation, and lightness or brightness, such as red, brown, pink, or gray. Furthermore, applicant conceded that the wording “EYESAFE” is merely descriptive because this wording was disclaimed in the application. See Mini Melts, Inc. v. Reckitt Benckiser LLC , 118 USPQ2d 1464, 1479 (TTAB 2016) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc. , 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)); TMEP §1212.02(b)-(c).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, VIVIDCOLOR EYESAFE immediately conveys to consumers that applicant provides lighting goods that feature strong and vibrant colors that are safe on the eyes. For example, the following attached evidence shows use of this or similar wording in articles and by third parties to describe a feature of the same or similar goods.
Thus, consumers encountering VIVIDCOLOR EYESAFE in connection with lighting goods are likely to perceive this wording as merely describing a feature of these goods, rather than indicating applicant is the source of the goods. As such, the mark is merely descriptive.
Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act.
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. 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 nonfinal Office action
/Elizabeth A. O'Brien/
Examining Attorney
Law Office 105
(571) 272-0046
Elizabeth.OBrien@uspto.gov
RESPONSE GUIDANCE
