To: | FOTOMASTER, LLC (yehonatan@fotomasterltd.com) |
Subject: | U.S. Trademark Application Serial No. 88715774 - PYLON - N/A |
Sent: | March 06, 2020 04:10:45 PM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88715774
Mark: PYLON
|
|
Correspondence Address:
|
|
Applicant: FOTOMASTER, LLC
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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.
Issue date: March 06, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Registration Refused – Likelihood of Confusion (PYLON and PYLON 4)
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).
U.S. Reg. No. 4766542 (PYLON)
In the present case, the marks themselves are identical – PYLON. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
This is significant because the marks cover related goods. The registrant’s goods are:
Computer programs for digital image evaluation; computer software for digital image evaluation; computer programs and computer software, for capturing, managing, processing, viewing, storing, editing, arranging, combining, sharing, manipulating, modifying, transmitting and displaying photographic data, images, and videos, which are executable on a computer outside a video camera and which are a component of a video camera; computer operating programs for capturing, managing, processing, viewing, storing, editing, arranging, combining, sharing, manipulating, modifying, transmitting and displaying photographic data, images, and videos, which are stored in a video camera
(emphasis added).
The applicant’s goods are:
Interactive photo kiosks for capturing, printing and uploading digital images for future use
(emphasis added).
The attached evidence, taken from the applicant’s own web site, shows that the applicant’s photo booths operate by means of “software” (“Software Upgrades: One Year Free✔”). Additional evidence attached shows that the use of software is common in the photo booth industry.
Where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Because a reasonable consumer easily could believe that all of the PYLON photo booths and software for use with photos and digital images came from a single company, confusion is likely and registration of the applicant’s mark must be refused.
U.S. Reg. No. 4857345 (PYLON 4)
In this case, both marks have as their dominant portion the word PYLON. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
This is significant because the marks cover related goods. The registrant’s goods are:
Computer programs for digital image evaluation; computer software for digital image evaluation; computer programs and computer software, for capturing, managing, processing, viewing, storing, editing, arranging, combining, sharing, manipulating, modifying, transmitting and displaying photographic data, images, and videos, which are executable on a computer outside a video camera and which are a component of a video camera; computer operating programs for capturing, managing, processing, viewing, storing, editing, arranging, combining, sharing, manipulating, modifying, transmitting and displaying photographic data, images, and videos, which are stored in a video camera
(emphasis added).
The applicant’s goods are:
Interactive photo kiosks for capturing, printing and uploading digital images for future use
(emphasis added).
The attached evidence, taken from the applicant’s own web site, shows that the applicant’s photo booths operate by means of “software” (“Software Upgrades: One Year Free✔”). Additional evidence attached shows that the use of software is common in the photo booth industry.
Where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Because a reasonable consumer easily could believe that all of the PYLON photo booths and software for use with photos and digital images came from a single company, confusion is likely and registration of the applicant’s mark must be refused.
General Information
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action.
/Doritt Carroll/
Trademark Examining Attorney
Law Office 116
571-272-9138
doritt.carroll@uspto.gov
RESPONSE GUIDANCE