United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88728614
Mark: UBER
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Correspondence Address:
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Applicant: Uber Technologies, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: August 07, 2020
This action is in response to the communication filed on July 21, 2020 in which applicant argued against the Section 2(d) refusal and amended the identification of goods. Applicant’s arguments against the Section 2(d) refusal based on a likelihood of confusion with the mark in U.S. Registration No. 4759763 are not persuasive; accordingly, this refusal is made final. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
In light of applicant’s amended identification of goods, the Section 2(d) refusal based on a likelihood of confusion with the marks in U.S. Registration Nos. 5255226 and 5152527 is withdrawn and the potential refusal based on a likelihood of confusion with U.S. Application Serial No. 79203801 (now U.S. Registration No. 6103998) is also withdrawn.
Applicant satisfied the requirements that the identification of goods be clarified and the multiple-class application requirements.
SUMMARY OF ISSUES
LIKELIHOOD OF CONFUSION – REFUSAL UNDER SECTION 2(d)
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 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).
Here, applicant’s mark is UBER and registrant’s mark is UBERLIGHT, both in standard characters. Thus applicant’s mark and registrant’s mark share the common wording “UBER[]”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Applicant’s mark differs from registrant’s mark in that registrant’s mark ends with “[]LIGHT” whereas applicant’s mark does not. Further, registrant’s mark includes the umlaut symbol over the “U” whereas applicant’s mark does not. These differences are not sufficient to obviate a likelihood of confusion, however.
Registrant’s mark intentionally combines the words “UBER” and “LIGHT” into one word. The “[]LIGHT” portion of registrant’s mark carries less trademark significance because even though this term is part of a unitary mark, the “[]LIGHT” portion of registrant’s mark is descriptive because it is used in connection with registrant’s “lighting fixtures.” See attached dictionary definitions. 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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). In the present case, the attached evidence shows that the wording “[]LIGHT” in the registered mark is merely descriptive of or generic for the registrant’s goods and/or services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “UBER[]” the more dominant element of the mark.
The fact that registrant’s mark includes an umlaut symbol over the “U” whereas applicant’s mark does not is not sufficient to obviate the likelihood of confusion between these marks. The attached dictionary definition notes that “UBER-” can be displayed with or without the umlaut
In any case, 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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Therefore, the marks are confusingly similar for purposes of Section 2(d).
Similarity of Goods
Here, applicant’s amended goods are “lighting apparatus and installations, namely, luminous tubes for lighting, searchlights, vehicle reflectors, lights for vehicles; safety lamps; tanning apparatus being tanning beds; vehicle lights for assisting rideshare passengers to locate vehicles; spot lights; lights for vehicles; directional lights for bicycles; light bulbs for directional signals for vehicles; solar-powered all-weather lights; lights for use in illuminating signs and displays; LED and HID light assemblies for vehicles; LED lighting assemblies for illuminated signs; light reflectors; lighting apparatus and installations for vehicles; light panels for vehicles, namely, cars, motorcars, automobiles, trucks, vans, SUVs, bicycles, motor scooters, two wheeled motorized scooters, self-balancing scooters, hovering boards, mopeds, skateboards, self-balancing boards, electric bicycles, electric assist bicycles, electric pedal assist bicycles, electric motor scooters, electrically-powered motor scooters, electric two wheeled motorized scooters, electric self-balancing scooters, self-balancing two-wheeled electric scooters, self-balancing one-wheeled electric scooters, electric hovering boards, electric mopeds, electric motorized skateboards, electric motorized self-balancing boards, semi-tractor trailer trucks and semi-tractor trailers, boats, watercraft, tractors and tractor trailers, helicopters, airplanes, aircraft, drones, vertical takeoff and landing aircraft (VTOL); light bars for vehicles, namely, cars, motorcars, automobiles, trucks, vans, SUVs, bicycles, motor scooters, two wheeled motorized scooters, self-balancing scooters, hovering boards, mopeds, skateboards, self-balancing boards, electric bicycles, electric assist bicycles, electric pedal assist bicycles, electric motor scooters, electrically-powered motor scooters, electric two wheeled motorized scooters, electric self-balancing scooters, self-balancing two-wheeled electric scooters, self-balancing one-wheeled electric scooters, electric hovering boards, electric mopeds, electric motorized skateboards, electric motorized self-balancing boards, semi-tractor trailer trucks and semi-tractor trailers, boats, watercraft, tractors and tractor trailers, helicopters, airplanes, aircraft, drones, vertical takeoff and landing aircraft (VTOL)” and registrant’s goods are “LED (light emitting diode) task lights; LED (light emitting diode) lighting fixtures; table lamps.”
Also attached is Internet evidence, consisting of website screenshots from LUMEFFICIENT, SYLVANIA, SUNLITE, LEDMATE, and MEGAMAN, establishing that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark to be sold 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).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Given the similarity of the marks and the relatedness of the goods and/or services, the refusal under Section 2(d) must be made final.
APPLICANT’S ARGUMENTS AGAINST THE SECTION 2(d) REFUSAL ARE UNPERSUASIVE
Applicant states that it “takes no position on whether any likelihood of confusion exists between the applied-for mark and the marks in the prior registrations” but “assuming for the sake of argument that any likelihood of confusion did exist,” applicant contends that “it no longer exists, in light of Applicant’s amendments to the goods.”
In light of applicant’s amended identification of goods, the Section 2(d) refusal was withdrawn with respect to U.S. Registration Nos. 5255226 and 5152527. And in light of applicant’s amended identification of goods, the potential Section 2(d) refusal based on a likelihood of confusion with U.S. Application Serial No. 79203801 (now U.S. Registration No. 6103998) was also withdrawn.
However, even with applicant’s amended identification of goods, there is still a likelihood of confusion with U.S. Registration No. 4759763 for the reasons set forth above. Therefore, this refusal must be made final.
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).
/Miah Rosenberg LaMont/
Examining Attorney
Law Office 117
(571) 272-6170
miah.lamont@uspto.gov
RESPONSE GUIDANCE