Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 21, 2021

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 12/29/2020.

 

In a previous Office action dated 6/29/2020, the trademark examining attorney refused registration of the applied-for mark based on the following:

 

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 5293699 and 5984848.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 5293699 and 5984848, as to be likely, when used on the identified goods and/or services, to cause confusion, or to cause mistake, or to deceive.  The examining attorney has considered the applicant’s arguments carefully, but has found them unpersuasive.  For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 5293699 and 5984848.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 mark is “KONO” with a design for “Retail store services featuring computer peripherals, parts therefor, and desk accessories” in International Class 035.

 

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)); TMEP §1207.01(b).

 

In the initial Office action, the examining attorney demonstrated that each of the applicant’s and registrant’s marks share identical wording and thus the marks were confusingly similar.

 

In response, applicant has responded that the applicant’s analysis did not consider the design elements of the compared marks, and as such, the marks are able to coexist.

 

Examining attorney respectfully disagrees with applicant’s arguments.

 

The applicant is accurate that the examining attorney may not dissect the mark in a mechanical way, such that the analysis disregards specific differing elements of each mark.  This is an accurate analysis.  However, even comparing the marks in their entirety, a high likelihood of confusion exists between each of applicant’s and registrant’s marks.  Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

As previously described in the initial Office action, 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)).  In the present case, a design of a fox, nor a circle featuring dots, nor a stylization in wording does enough to obviate the highly similar impression imbued in marks with identical wording.   The marks are each identical in wording and sound such that the likelihood that the average consumer would confuse the compared marks is high. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). 

 

For these reasons, even taking the entirety of the marks into account the compared marks are confusingly similar in nature.

 

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/or 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).

 

 

In the initial Office action, examining attorney provided evidence that entities which provided registrant’s goods and services, also provided the services as described by the applicant, such that the marks are confusingly similar.

 

In response, applicant has argued that the evidence provided did not demonstrate the aforementioned overlap between the compared entities, such that the marks are not confusingly similar.

 

Examining attorney respectfully disagrees with applicant’s arguments.

 

Applicant has described that it provides “Retail store services featuring computer peripherals, parts therefor, and desk accessories” in International Class 035

 

Registration No. 5293699 has described that it provides “retail store services featuring computer software” in International Class 035.

 

Registration No. 5984848 has described that it provides “computer game software; 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” in International Class 009.

 

Registration No. 5293699

 

The applicant has argued that as the evidence provided by the examining attorney features third-party software, that the evidence of overlap between entities that provide both retail store services for computer peripherals and computer software does not demonstrate overlap.  However, the applicant’s arguments are without merit.  Indeed, entities that provide retail store services for third-party software, nonetheless still provide retail store services for computer software all the same.  When dealing with retail store services, “evidence that shows… that two types of goods are sometimes sold in the same store” is exactly the type of evidence that is probative to indicate that the average consumer would be primed to believe that the applicant’s and registrant’s services are in the same channels of trade.

 

Further, the examining attorney now provides additional attached Internet evidence from Micro Center and TigerDirect, consisting of entities which provide both retail store services for computer peripherals and computer software, establishing that the same entity commonly provides the relevant services and markets the services under the same mark, and that the relevant 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).  As such the examining attorney maintains its position that the applicant’s and registrant’s services overlap.

 

Registration No. 5984848

 

The examining attorney disagrees with the assessment that a computer server would not be considered a computer peripheral.  Per the attached evidence from Merriam-Webster a peripheral is defined as “a device connected to a computer to provide communication (such as input and output) or auxiliary functions (such as additional storage).”  This definition would include the servers as described by Oracle, Microsoft, and IBM.  

 

Nonetheless, to clear up any possible confusion as to the relatedness of the applicant’s services and the registrant’s goods, the examining attorney now provides evidence from Valve, Microsoft, Nintendo, Blizzard, and Sony Playstation of entities which provide both the registrant’s “computer game software” and applicant’s “Retail store services featuring computer peripherals” including retail sales for peripherals including VR headsets, mice, and headphones.  This establishes that the same entity commonly produces and 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).

 

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).

 

As such, the examining attorney goes FINAL with respect to the refusal.

 

Issues of Actual Confusion

 

With respect to issues of concurrent and actual use, “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).

 

For these reasons, the refusal under Section 2(d) is now made FINAL.

 

Comments

 

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 refusals 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. 

 

 

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).

 

 

Goran, Bradley

/Bradley Goran/

Examining Attorney

USPTO

Law Office 107

(571) 270-7482

bradley.goran@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 21, 2021 for

U.S. Trademark Application Serial No. 88865664

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Goran, Bradley

/Bradley Goran/

Examining Attorney

USPTO

Law Office 107

(571) 270-7482

bradley.goran@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 21, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”