To: | Shen Zhen Shi Ling Ku Dian Zi Shang Wu Y ETC. (Leonard@createtrademark.com) |
Subject: | U.S. Trademark Application Serial No. 88482820 - METENE - 19050338 |
Sent: | September 26, 2019 09:41:04 AM |
Sent As: | ecom119@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88482820
Mark: METENE
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Correspondence Address:
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Applicant: Shen Zhen Shi Ling Ku Dian Zi Shang Wu Y ETC.
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Reference/Docket No. 19050338
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: September 26, 2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5635861. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
In this case, applicant is seeking to register METENE in standard characters for, as relevant here, “Audio speakers; Batteries; Camcorders; Chargers for batteries; Computer hardware and recorded computer software for retail inventory management, sold as a unit; Computer keyboards; Computer peripheral equipment; Connection cables; Converters; Digital audio and video recorders and players; Earphones and headphones; Headsets for mobile telephones; Lenses for photographic apparatus; Optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography; Smartwatches; Televisions; Video recorders” in International Class 009.
Registrant has registered MITENE in standard characters in International Class 009 for: “Electronic machines, apparatus and their parts, namely, flat panel display screens, electric luminescent display panels and electronic apparatus, namely, electronic display boards, plasma display boards, electronic display screens; computer hardware and peripherals; telecommunication machines and apparatus, namely, digital, radio and optical transmitters and receivers, antennas and amplifiers, and computer hardware for telecommunications; computer software used for managing, controlling, operating, transmitting and displaying content on electronic display units; computer software used to input, organize and display commercial, advertisement, entertainment, gaming, sports, news, weather and traffic information on electronic display units; software for processing images, graphics and text; downloadable music files; downloadable image files containing commercial, advertisement, entertainment, gaming, sports, news, weather and traffic information; pre-recorded images and image files recorded on computer media; pre-recorded data carriers, namely, encoded electronic circuits, magnetic discs, magnetic tapes, IC cards, optical discs, CD-ROMs and DVDs featuring computer hardware, computer software, telecommunications devices, display units, and commercial, advertisement, entertainment, gaming, sports, news, weather and traffic information; photographic machines and apparatus, namely, cameras; cinematographic machines and apparatus, namely, media players, recording and playing devices for sound and image carriers, earphones, headphones, headset; optical machines and apparatus, namely, optical receivers, optical disk readers, optical disk drives, optical transmitters, optical transceivers.”
COMPARISON 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).
In this case, applicant’s and registrant’s marks are both in standard characters and have only one lettering difference. Specifically, the first vowel of applicant’s mark is an “E” and that of registrant’s mark is an “I.” This is insufficient to overcome the otherwise existing similarities between the two marks.
Based on these considerations, the marks are considered similar for likelihood of confusion purposes.
COMPARISON OF THE GOODS
In this case, the registration uses broad wording to describe “computer hardware and peripherals [and] headset[s]” which presumably encompasses all goods of the type described, including applicant’s more narrow “Computer hardware and recorded computer software for retail inventory management, sold as a unit; Computer keyboards; Computer peripheral equipment; Connection cables; … [and] headsets for mobile telephones.” 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, these 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)).
Also, applicant and registrant have identical goods insofar as both list “earphones and headphones” in their respective identifications. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Moreover, registrant has listed “cameras” among its goods. Applicant has listed among its goods various components and accessories for underwater photography. The Examining Attorney attaches evidence from B&H Photo, Video, Pro Audio showing that cameras like registrant’s and applicant’s goods are commonly produced, provided and marketed under the same mark. See attached. 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). Also, because the registration uses broad phrasing to describe “cameras,” this includes applicant’s more narrow “camcorders.” 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).
In addition, applicant has listed “digital audio and video recorders and players [and] video recorders” among its goods. These are the functional equivalent of registrant’s “recording and playing devices for sound and image carriers.” Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Registrant has also listed “amplifiers” as among its goods, which as the attached evidence from Oxford’s Online Dictionary shows, is defined as “a device consisting of an amplifier combined with a loudspeaker and used to increase the volume of the sound produced by electric guitars and other musical instruments.” See attached. Therefore, applicant’s “audio speakers” in its identified goods are an essential component of registrant’s amplifiers, and are hence related.
By the same token, applicant has listed “televisions” among its goods, which as the attached evidence from American Heritage Online Dictionary shows, is defined as “an electronic device for viewing television programs and movies, consisting of a display screen and speakers.” See attached. Therefore, registrant’s “flat panel display screens” and “electronic display screens” in its identified goods are an essential component of applicant’s televisions, and are hence related.
As noted above, registrant has listed “computer hardware and peripherals” among its goods and applicant has listed “batteries, chargers for batteries, converters, and smartwatches” among its goods. The attached Internet evidence, consisting of Apple establishes that the same entity commonly produces, provides, and markets the relevant goods under the same mark. 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).
Based on these considerations, applicant’s and registrant’s relevant goods are considered related for Section 2(d) purposes.
CONCLUSION
Overall, because the marks are similar and the goods are related, a likelihood of confusion arises as to the underlying source of applicant’s goods. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
UNITED STATES COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
ASSISTANCE
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 nonfinal Office action
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE