Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 12, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 21, 2020.

 

In a previous Office action dated December 7, 2019, 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 registered marks.  In addition, applicant was required to satisfy the following requirement: amend the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: amend the identification of goods.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the Section 2(d) refusal for the reasons stated below. See 37 C.F.R. §2.63(b); TMEP §714.04. All previous arguments and evidence, where applicable, are incorporated by reference herein.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark continues to be refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3869417 and 3869431.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Applicant’s applied-for mark is a design mark consisting of a hummingbird with four stars underneath for the amended goods “Computer memories; Memory modules; Memory cards for computers; Blank flash memory cards; Blank flash memory disks; DRAM (dynamic random access memory) modules; RAM (random access memory) modules; Data memories in the nature of data memory modules; Disc memories; Electronic memories; Semi-conductor memory units; Solid state drives; Blank USB flash drives; Disk drives; Electronic reading apparatus for magnetic cards; Electronic reading apparatus for magnetic disks; Electronic reading apparatus for magnetic tapes; Electronic card readers; Flash card readers; Smart card readers; Chip card readers; Interface cards for computers; Cameras; Video cameras; Digital audio players; Integrated circuits; Integrated circuit boards; Semiconductors; Secure Digital (SD) Memory Cards; Memory cards for video game machines; Earphones; Portable media players; Audio-video receivers; Optical disk readers; Blank optical disks; Optical disk drives; USB cables; USB cables for cellphones; Portable battery chargers; Batteries and battery chargers; Electronic battery charging devices in the nature of wireless charging pads for use with cell phones, tablets, and mobile devices; Charging stands for electronic devices; Wireless communication devices for voice, data or image transmission; Computer network adapters, switches, routers and hubs; LAN (local area network) hardware; Network access server hardware; WAN (wide area network) hardware; Computer hardware, namely, wireless access point (WAP) devices, wireless network repeaters, and wireless network extenders; security surveillance robots for personal or hobby use; humanoid robots with artificial intelligence for personal or hobby use” in International Class 9.

 

The examining attorney maintains that there is a likelihood of confusion with the following registered marks:

 

• Registration No. 3869417 for a hummingbird with four stars underneath it for “Computer hardware; memories and memory modules for computers and other electronic devices, namely, memory cards, flash memory cards, flash memory disks, DRAM (dynamic random access memory) cards, RAM (random access memory) cards, computer memories, data memories, electronic memories, semi-conductor memory units, blank digital cards for computers, digital memory cards; solid state drives; USB flash drives; electrical, electro-technical and electronic devices, namely, data input, data processing, data transmission, data storage and data output devices; electrical power supplies, electrical power supplies for computers; electronic card readers; flash card readers” in International Class 9.

 

• Registration No. 3869431 for a hummingbird with four stars underneath it for “Computer hardware; memories and memory modules for computers and other electronic devices, namely, memory cards, flash memory cards, flash memory disks, DRAM (dynamic random access memory) cards, RAM (random access memory) cards, computer memories, data memories, electronic memories, semi-conductor memory units, blank digital cards for computers, digital memory cards; solid state drives; USB flash drives; electrical, electro-technical and electronic devices, namely, data input, data processing, data transmission, data storage and data output devices; electrical power supplies, electrical power supplies for computers; electronic card readers; flash card readers” in International Class 9.

 

The examining attorney maintains that there is a likelihood of confusion between these marks based on the following relevant factors: similarity of the marks and similarity and nature of the goods. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.

 

 

In its Response, applicant attempts to claim ownership of the cited registrations. However, this statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. Applicant did not verify this statement with an affidavit or a signed declaration, therefore, it is not acceptable and the refusal is continued and maintained.

 

b.     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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When the marks at issue are both design marks, similarity of the marks is determined primarily on the basis of visual similarity.  See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c).  However, a side-by-side comparison is not the test.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973).  When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).

 

Here both applicant’s and registrant’s marks are design marks consisting of a hummingbird in flight with four stars below the tail. Further, the color of the mark in both the application and Registration No. 3869431 is the same. The marks are visually similar and create similar commercial impressions. As such, the marks are confusingly similar.

 

c.     Comparison of the Goods

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In the present case, applicant identified the amended goods “Computer memories; Memory modules; Memory cards for computers; Blank flash memory cards; Blank flash memory disks; DRAM (dynamic random access memory) modules; RAM (random access memory) modules; Data memories in the nature of data memory modules; Disc memories; Electronic memories; Semi-conductor memory units; Solid state drives; Blank USB flash drives; Disk drives; Electronic reading apparatus for magnetic cards; Electronic reading apparatus for magnetic disks; Electronic reading apparatus for magnetic tapes; Electronic card readers; Flash card readers; Smart card readers; Chip card readers; Interface cards for computers; Cameras; Video cameras; Digital audio players; Integrated circuits; Integrated circuit boards; Semiconductors; Secure Digital (SD) Memory Cards; Memory cards for video game machines; Earphones; Portable media players; Audio-video receivers; Optical disk readers; Blank optical disks; Optical disk drives; USB cables; USB cables for cellphones; Portable battery chargers; Batteries and battery chargers; Electronic battery charging devices in the nature of wireless charging pads for use with cell phones, tablets, and mobile devices; Charging stands for electronic devices; Wireless communication devices for voice, data or image transmission; Computer network adapters, switches, routers and hubs; LAN (local area network) hardware; Network access server hardware; WAN (wide area network) hardware; Computer hardware, namely, wireless access point (WAP) devices, wireless network repeaters, and wireless network extenders; security surveillance robots for personal or hobby use; humanoid robots with artificial intelligence for personal or hobby use” in International Class 9.

 

Registrant identified “Computer hardware; memories and memory modules for computers and other electronic devices, namely, memory cards, flash memory cards, flash memory disks, DRAM (dynamic random access memory) cards, RAM (random access memory) cards, computer memories, data memories, electronic memories, semi-conductor memory units, blank digital cards for computers, digital memory cards; solid state drives; USB flash drives; electrical, electro-technical and electronic devices, namely, data input, data processing, data transmission, data storage and data output devices; electrical power supplies, electrical power supplies for computers; electronic card readers; flash card readers” in International Class 9.

 

In this case, applicant and registrant have identified identical goods specifically, computer memories, memory cards for computers, electronic memories, semi-conductor memory units, solid state drives, electronic card readers, and flash card readers. Further, the registration uses broad wording to describe its goods such as computer hardware, data memories, flash memory cards, flash memory disks, USB flash drives, and electronic card readers, which presumably encompasses all goods of the type described, including applicant’s more narrow identifications of memory modules,  memory cards for computers, data memories in the nature of data memory modules, blank flash memory cards, blank flash memory disks, DRAM (dynamic random access memory) modules, RAM (random access memory) modules, computer memories, blank USB flash drives, disk drives, electronic reading apparatus for magnetic cards, smart card readers, chip card readers, interface cards for computers, integrated circuits, integrated circuit boards, semiconductors, secure digital (SD) memory cards, computer network adapters, switches, routers and hubs, LAN (local area network) hardware, network access server hardware, WAN (wide area network) hardware, and computer hardware, namely, wireless access point (WAP) devices, wireless network repeaters, and wireless network extenders since applicant’s goods are types of computer hardware, flash memory cards, flash memory disks, USB flash drives, and electronic card readers.  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, the 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)).  Thus, applicant’s and registrant’s goods are related.

 

To the extent the evidence does not address all of applicant’s goods, relatedness does not have to be established for every good in an identification.  It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).  In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.

 

d.     Conclusion

 

Applicant’s and registrant’s marks are confusingly similar. Further, the goods of applicant and registrant are considered closely related. Therefore, registration of the applied-for mark is refused under Trademark Act Section 2(d).

 

ADVISORY REGARDING CLAIM OF OWNERSHIP OF REGISTRATIONS

 

If the marks in the cited registrations are owned by applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)       Submit copies of documents evidencing the chain of title; or

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 3869417 and 3869431.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

RESPONSE GUIDELINES

 

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).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

/Danythe Johnson/

Trademark Examining Attorney

Law Office 120

Phone: 571-272-4391

Email: danythe.johnson@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 12, 2020 for

U.S. Trademark Application Serial No. 88600497

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Danythe Johnson/

Trademark Examining Attorney

Law Office 120

Phone: 571-272-4391

Email: danythe.johnson@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 12, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”