To: | Google LLC (tmdocket@google.com) |
Subject: | U.S. Trademark Application Serial No. 88851162 - CAMERA GO - GT-1507-US-1 |
Sent: | May 23, 2020 08:09:36 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88851162
Mark: CAMERA GO
|
|
Correspondence Address:
|
|
Applicant: Google LLC
|
|
Reference/Docket No. GT-1507-US-1
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: May 23, 2020
· Section 2(d) Refusal – Likelihood of Confusion
· Amend Identification of Services (Class 42)
· Disclaimer Required
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is CAMERA GO for “Downloadable mobile application software for creating, capturing, uploading, downloading, editing, viewing, storing, displaying, and sharing photos, images, audio-visual and video content via a global computer network, mobile devices and other communications networks” in class 9 and “Providing non-downloadable mobile application software, namely, software for creating, capturing, uploading, downloading, editing, viewing, storing, displaying, and sharing photos, images, audio-visual and video content via a global computer network, mobile devices and other communications networks” in class 42. Registrant’s mark is CAMERINGO for “Computer application software for mobile phones, namely, software for photography and image editing” in class 9.
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 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 [and services] and differences in the marks.”); TMEP §1207.01.
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).
In this case, the marks are similar because they both begin with CAMER and end with GO. Although the applied-for mark, CAMERA GO consists of two words, while the registered mark combines these elements into a single word, CAMERINGO, consumers are likely to retain similar commercial impressions – of photography and movement – from both. 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).
Comparison of the Goods and Services
In this case, the goods and services are related because applicant and registrant provide software that performs essentially identical functions of photography and image editing.
The determination of the likelihood of confusion is based on the description of the goods and services 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 this case, the function of applicant’s software is “creating, capturing, uploading, downloading, editing, viewing, storing, displaying, and sharing photos, images, audio-visual and video content,” which presumably encompasses all functions of the type described, including the registrant’s “photography and image editing.” 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 and services 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 and services 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 overlapping goods and services are related.
Therefore, upon encountering the relevant marks used for the relevant software, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source. Consequently, registration is refused under Section 2(d).
Identification of Services (Class 42)
The identification of services in class 42 currently reads: “Providing non-downloadable mobile application software, namely, software for creating, capturing, uploading, downloading, editing, viewing, storing, displaying, and sharing photos, images, audio-visual and video content via a global computer network, mobile devices and other communications networks.”
This wording is indefinite and must be clarified because it does not specifically identify the particular services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification of services in class 42, if accurate (changes in bold): “Providing temporary use of non-downloadable mobile application software, namely, software for creating, capturing, uploading, downloading, editing, viewing, storing, displaying, and sharing photos, images, audio-visual and video content via a global computer network, mobile devices and other communications networks.”
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.
Disclaimer Required
The attached dictionary definitions show that cameras refer to a device used to take photos. Thus, the wording merely describes a function of applicant’s software, namely, creating photos.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CAMERA” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Advisory – Responding to a Non-Final Office Action
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.
Click to file a response to this nonfinal Office action.
/Sara Anne Helmers/
Sara Helmers (she/her)
Trademark Examining Attorney
Law Office 126
571-270-3639
Sara.Helmers@uspto.gov
RESPONSE GUIDANCE