United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88865664
Mark: KONO
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Correspondence Address:
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Applicant: Kono Store Corporation
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Reference/Docket No. 63-00538
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 29, 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.
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5293699 and 5984848. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 has applied to register the mark “KONO” with a design in International Class 035 for “Retail store services featuring computer peripherals, parts therefor, and desk accessories.”
Registration is refused due to a likelihood of confusion with the following marks:
1) “KONO” with stylized text in International Class 035 for “Advertising and marketing consultancy, advertising and marketing, advertising agencies, advertising, marketing services, mobile advertising services for others; promoting and marketing the goods and services of others by distributing coupons, providing hyperlinks to websites of others; rental of advertising space on web sites; rental of advertising space on websites for advertising goods and services; providing marketing consulting in the field of social media; on-line advertising services for others; providing and rental of advertising space on the internet; business assistance, management and information services; business information management; commercial information and advice for consumers; commercial information agencies; business information and inquiries; compilation and systematization of information into computer databases; computerized file management; wholesale store services featuring computer software; retail store services featuring computer software; design of advertising materials for others,” as well as related goods and services in International Classes 009 and 042; and
2) “KONO” with a design in International Class 009 for “Computer software for use in database management, for use in downloading data, for use in uploading data, for use in processing data, for use in operating database, for use in address management, for use in schedule management, for use in electronic commerce; downloadable computer software in the nature of a mobile application for use in database management, for use in downloading data, for use in uploading data, for use in processing data, for use in operating database, for use in address management, for use in schedule management, for use in electronic commerce; computer software for providing security to networks, namely, computer anti-virus software; computer application software for digital or electronic handheld tablets, namely, software for use in database management, for use in downloading data, for use in uploading data, for use in processing data, for use in operating database, for use in address management, for use in schedule management, for use in electronic commerce; computer application software for smart phones, namely, software for use in database management, for use in downloading data, for use in uploading data, for use in processing data, for use in operating database, for use in address management, for use in schedule management, for use in electronic commerce; computer game software; electronic display interfaces for electronic calendars; downloadable printable stationery materials, namely, business cards for sending by regular mail, business cards for sending by electronic mail; consumer coupons downloaded from a global computer network; downloadable electronic publications in the nature of user-generated data, in the nature of providing tutorials, in the nature of user-generated data in the field of research and development of computer software, providing online contents; downloadable technical data sheets via the internet and wireless devices; computer programs for meeting and event scheduling for use in business meetings and private gatherings; computer software for managing group calendars for use in business meetings and private gatherings; computer software for task delegation and reporting in the field of research and development of computer software, providing online contents,” as well as related services in International Class 042.
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 evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). With respect to each of the marks, as described above, the wording portion of a mark is typically given more weight than the design portion of a mark, as the average consumer tends to focus more on the former rather than the latter. In the present case, the designs in each of applicant’s and registrant’s marks does little to obviate the impression left by the wording, such that the wording is the dominant portion of each mark.
In the present case, applicant’s mark is “KONO” and registrant’s marks are for “KONO.” These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods and Services
The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods and services 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 and/or services] 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).
Applicant has identified “Retail store services featuring computer peripherals, parts therefor, and desk accessories” as services it provides in International Class 035.
Registration is refused due to a likelihood of confusion with the following goods and services:
1) “KONO” with respect to Registration No. 5293699 in International Class 035 for “retail store services featuring computer software,” as well as related goods and services in International Classes 009 and 042; and
2) “KONO” with respect to Registration No. 5984848 in International Class 009 for “Computer software for use in database management, for use in downloading data, for use in uploading data, for use in processing data, for use in operating database, for use in address management, for use in schedule management, for use in electronic commerce,” as well as related services in International Class 042.
With respect to Registration No. 5984848, the attached Internet evidence from Oracle, Microsoft, and IBM, consisting of entities which provide both database management software as well as computer peripherals, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and services and markets the goods and services under the same mark, and that the relevant goods and services are sold or provided 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).
Conclusion
In the present case applicant’s and registrant’s marks are identical, applicant’s services are commonly sold by the same entity as registrant’s goods and services, and the applicant’s and registrant’s goods and services are provided through the same channels of trade. Therefore applicant’s mark is refused under Section 2(d) of the Trademark Act.
Comments
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.
Goran, Bradley
/Bradley Goran/
Examining Attorney
USPTO
Law Office 107
(571) 270-7482
bradley.goran@uspto.gov
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