To: | Prodtika LLC (trademarks@legalforce.com) |
Subject: | U.S. Trademark Application Serial No. 88571689 - CLEARVIEW - 1187140 |
Sent: | December 10, 2019 11:48:58 AM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88571689
Mark: CLEARVIEW
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Correspondence Address: LEGALFORCE RAPC WORLDWIDE, P.C.
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Applicant: Prodtika LLC
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Reference/Docket No. 1187140
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
The assigned examining attorney has reviewed the referenced application and determined the following.
I. LIKELIHOOD OF CONFUSION:
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant's mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 4,583,585 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case (as with other cases) involves at minimum a two-part analysis. First, the marks are compared in their ‘entireties’ for similarities in sound, appearance, meaning/connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Second, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi). The key concern is whether confusion as to the source of the goods/services is likely.
- COMPARISON OF THE MARKS:
The examining attorney must compare the marks in their entireties for similarities in sound, appearance, and meaning/connotation. 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).
A comparison of the applicant’s mark CLEARVIEW and the registered mark CLEARVIEW shows that the marks are identical in every element sound, appearance, and meaning and, thus, overall commercial impression.
- COMPARISON OF THE GOODS/SERVICES:
The applicant’s goods and the registrant’s goods are related in that they are complimentary goods that are commonly used together and, therefore, travel in the same channels of trade. If similar goods travel in the same channels of trade (and even used together) confusion as to source is likely where they are sold under same/similar marks. Here the applicant’s goods are protective screen covers for electronic devices, whereas the registrant produces protective electronic device covers. These goods naturally are complimentary in nature and use and will be used by an average consumer together in many instances. In fact, some protective device covers often come with built in screen covers, for example, please see attached http://www.amazon.com/stores/node/15962558011?_encoding=UTF8&field-lbr_brands_browse-bin=SPIDERCASE&ref_=bl_dp_s_web_15962558011 for the brand SPIDERCASE stating “Samsung Galaxy S10E Case, SPIDERCASE Clear Full Body Heavy Duty Protective Case with Built-in Screen Protector Shockproof Rugged Cover Designed for Samsung Galaxy S10E 5.8 inch 2019 Released,” which maintains a store of line of such covers on Amazon (please see the attached storefront). Therefore, the applicant’s goods are highly likely to be encountered by the same purchasers of the registrant’s goods.
Consequently, there is a likelihood of confusion as between the applicant’s mark and the registered mark(s).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
II. CONCLUSION:
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/KaranChhina/
Karanendra S. Chhina
Trademark Attorney
Law Office 114
(571) 272-9447
karan.chhina@uspto.gov
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.
RESPONSE GUIDANCE