To: | TCL Research America, Inc. (TRADEMARK@BOSELAW.COM) |
Subject: | U.S. Trademark Application Serial No. 88826170 - IDEO - 16144-0080 |
Sent: | June 04, 2020 07:08:15 PM |
Sent As: | ecom101@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88826170
Mark: IDEO
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Correspondence Address: |
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Applicant: TCL Research America, Inc.
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Reference/Docket No. 16144-0080
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.
Issue date: June 04, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
· Section 2(d) Refusal—Likelihood of Confusion
· Identification and Classification of Goods and/or Services
· Multiple Class Application Requirements
Section 2(d) Refusal—Likelihood of Confusion
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.
Applicant’s applied-for mark is IDEO for “Computer software used for real time people tracking, face detection, object tracking for use with televisions, mobile phones, projectors, computers, tablets, cameras and monitors; computer software, firmware and hardware for use in visual, voice, audio, motion, eye and gesture tracking and recognition; interpretive interface software for facilitating interaction between humans and machines; all of the foregoing for use in human interaction with 2- dimensional and 3-dimensional media content”.
Registrant’s mark is IDIO for “Interactive computer software for analyzing users' interests to deliver marketing intelligence; computer software for wireless content delivery based on users' interests or to market the goods or services of others; computer software for use in customer relationship management (CRM)”.
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).
Here, the marks are similar in sound, appearance, and commercial impression. The only difference between the marks is that applicant’s mark contains an “e” where registrant’s contains an “i” (Id[e/i]o) Additionally, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Based on the foregoing, applicant’s applied-for mark and registrant’s mark are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods and/or Services
Based on the analysis above, applicant’s and registrant’s goods and/or services are related.
Because applicant’s and registrant’s marks are similar and the goods and/or services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification and Classification of Goods and/or Services
Applicant may adopt the following wording, if accurate:
Class 9: Downloadable computer software used for real time people tracking, face detection, object tracking for use with televisions, mobile phones, projectors, computers, tablets, cameras and monitors; downloadable computer software, firmware and hardware sold as a unit for use in visual, voice, audio, motion, eye and gesture tracking and recognition; downloadable interpretive interface software for facilitating interaction between humans and machines; all of the foregoing for use in human interaction with 2- dimensional and 3-dimensional media content
Class 42: Providing online non-downloadable computer software used for real time people tracking, face detection, object tracking for use with televisions, mobile phones, projectors, computers, tablets, cameras and monitors; rental of computer software, firmware and hardware for use in visual, voice, audio, motion, eye and gesture tracking and recognition; interpretive interface software for facilitating interaction between humans and machines; all of the foregoing for use in human interaction with 2- dimensional and 3-dimensional media content
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.
Multiple Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Assistance
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Catherine Caycedo/
Catherine Caycedo
Trademark Examining Attorney
Law Office 101
(571) 272-7066
Catherine.Caycedo@uspto.gov
RESPONSE GUIDANCE