To: | Eyebloc, LLC (docket@markerylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88518689 - NANOBLOC - US-EYE-004A |
Sent: | October 21, 2019 02:23:22 PM |
Sent As: | ecom123@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88518689
Mark: NANOBLOC
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Correspondence Address:
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Applicant: Eyebloc, LLC
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Reference/Docket No. US-EYE-004A
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: October 21, 2019
INTRODUCTION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is NANOBLOC for webcam covers, and the registrant’s mark is:
· NANOBLOCK CHARM U.S. Registration No. 5759950 in relevant part for “Covers for smartphones and mobile phones; cases for smartphones and mobile phones; straps for smartphones and mobile phones; strap for smartphones and mobile phones with screen cleaner for smartphone and mobile phone; protective films adapted for smartphones; protective carrying cases for digital audio tape players; protective cases for earphones; protective cases for headphones.”
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.
Similarity of the Marks
In a likelihood of confusion determination, 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).
Here, the applicant's standard character mark NANOBLOC is confusingly similar to the registrant's stylized mark NANOBLOCK CHARM.
In the present case, the marks begin with or consist solely of the nearly identical wording “NANOBLOC” and “NANOBLOCK” which is nearly identical in appearance, and identical in sound and overall commercial impression. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Because nearly identical wording “NANOBLOC” and “NANOBLOCK” is the first and/or only wording in the marks, consumers will focus on that wording for source identification, thereby making it the dominant feature of the marks. Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
The registrant's mark contains the additional wording “CHARM.” However, this addition is insufficient to obviate the similarities between the marks. Specifically, regiastrant disclaims this descriptive wording in the mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, this wording is less significant in terms of affecting the mark's/marks' overall commercial impressions, and the nearly identical wording “NANOBLOCK” remains the dominant element of the mark.
Moreover, while applicant’s mark is in standard characters and registrant’s mark is in stylized or design text, this difference does not obviate the similarities between the marks. 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, applicant mark could be presented in stylized characters and/or with a design element identical to that of registrants.
For these reasons, when consumers encounter the parties' goods and/or services using marks with these similarities, they are likely to be confused as to the source of the goods and/or services. Therefore, the marks are confusingly similar.
Relatedness of the Goods and/or Services
Here, the applicant's goods are closely related to the registrant’s goods as discussed further below.
The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Specifically, the attached evidence shows that third parties routinely offer the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels. See e.g. http://www.staples.com/webcam+cover/directory_webcam+cover, http://www.staples.com/phone+covers/directory_phone%2520covers?deptFid=Department_3A_22Cell!Phone!Cases_22, http://www.staples.com/cases+for+headphones/directory_cases%2520for%2520headphones and http://www.staples.com/protective+films+for+smart+phones/directory_protective%2520films%2520for%2520smart%2520phones%255d?akamai-feo=off (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels) and http://www.amazon.com/stores/node/5152329011?_encoding=UTF8&field-lbr_brands_browse-bin=SupCase&ref_=bl_dp_s_web_5152329011, http://www.amazon.com/SUPCASE-Ultra-Thin-Desktop-Notebook-Security/dp/B07KVZBP8K/?tag=georiot-us-default-20&ascsubtag=laptopmag-1022539441045125874-20 and http://www.amazon.com/stores/page/E50C3ED3-77AC-4AEA-9786-03C9E59D8827?ingress=2&visitId=0d39c8f6-fd20-4c43-bffe-52575e92a9a1&ref_=bl_dp_s_web_5152329011 (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels).
The attached Internet evidence establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark and the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and/or services 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).
Consequently, upon encountering applicant’s mark used in connection with applicant’s goods/services, and registrant’s mark used in connection with registrant’s goods/services, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
Because the marks are confusingly similar and the goods and/or services are closely related, consumers are likely to be confused as to the source of the goods and/or services. Thus, registration is refused pursuant to Trademark Act Section 2(d).
RESPONSE TO REFUSAL
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
REQUIREMENT
If the applicant responds to the refusal, then the applicant also must respond to the below requirement.
IDENTIFICATION OF GOODS AND/OR SERVICES AMENDMENT REQUIRED
Therefore, the applicant may adopt the following identification of goods and/or services, if accurate:
Class 09: Webcam covers in the nature of apparatus for blocking webcam images used for privacy and security purposes
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
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
/Karen S. Derby/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 123
Karen.Derby@uspto.gov
571.270.7070
RESPONSE GUIDANCE