United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 90014191
Mark: ARMTV
|
|
|
Correspondence Address:
|
|
|
Applicant: Gary Roberts S.
|
|
|
Reference/Docket No. N/A
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: September 28, 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
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5879656, 5879654, 4980649, and 4980650. 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.
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 the present case, applicant’s mark is ARMTV and registrant’s marks are ARM (with stylization) (Registration No. 5879656), ARM (Registration No. 5879654), ARM (with stylization) (Registration No. 4980649), and ARM (with stylization) (Registration No. 4980650). Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Moreover, the stylization in Registration Nos. 5879656, 4980649, and 4980650 do not obviate a likelihood of confusion refusal. 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)).
Therefore, the marks are confusingly similar.
Comparison of the Goods and/or Services
Applicant’s goods and/or services are “Streaming of video material on the Internet.”
Registrant’s goods and/or services are “Electronic data transmission services for the dissemination and exchange of profiles of IoT devices and systems; electronic data transmission services for the dissemination and exchange of profiles of IoT devices and systems held on SIM cards and embedded SIM cards; electronic exchange of information held on SIM cards and embedded SIM cards via telecommunication networks, digital networks and electronic communication networks; providing access to and interconnectivity with IoT systems and devices, the internet, and databases” (in part) (Registration No. 5879656), “Electronic data transmission services for the dissemination and exchange of profiles of IoT devices and systems; electronic data transmission services for the dissemination and exchange of profiles of IoT devices and systems held on SIM cards and embedded SIM cards; electronic exchange of information held on SIM cards and embedded SIM cards via telecommunication networks, digital networks and electronic communication networks; providing access to and interconnectivity with IoT systems and devices, the internet, and databases” (in part) (Registration No. 5879654), “Electronic transmission of computer software, data and information in the field of design and development of electronic data processing equipment, microprocessors, system-on-chip devices, processors, chips, application specific integrated circuits, graphics processing units, semiconductor intellectual property cores, instruction set architectures, RISC-based instruction set architectures, processor-based devices, integrated circuits, computer hardware, computer software, integrated circuit based devices, electronic devices that send and receive data in a connected network, microprocessor cores, macro cells, microcontrollers, bus interfaces and printed circuit boards via the Internet and computer and electronic communication networks; providing on-line chat rooms, bulletin boards and community forums for the transmission of messages among computer users in the field of design and development of electronic data processing equipment, microprocessors, system-on-chip devices, processors, chips, application specific integrated circuits, graphics processing units, semiconductor intellectual property cores, instruction set architectures, RISC-based instruction set architectures, processor-based devices, integrated circuits, computer hardware, computer software, integrated circuit based devices, electronic devices that send and receive data in a connected network, microprocessor cores, macro cells, microcontrollers, bus interfaces and printed circuit boards” (in part) (Registration No. 4980649), and “Electronic transmission of computer software, data and information in the field of design and development of electronic data processing equipment, microprocessors, system-on-chip devices, processors, chips, application specific integrated circuits, graphics processing units, semiconductor intellectual property cores, instruction set architectures, RISC-based instruction set architectures, processor-based devices, integrated circuits, computer hardware, computer software, integrated circuit based devices, electronic devices that send and receive data in a connected network, microprocessor cores, macro cells, microcontrollers, bus interfaces and printed circuit boards via the Internet and computer and electronic communication networks; providing on-line chat rooms, bulletin boards and community forums for the transmission of messages among computer users in the field of design and development of electronic data processing equipment, microprocessors, system-on-chip devices, processors, chips, application specific integrated circuits, graphics processing units, semiconductor intellectual property cores, instruction set architectures, RISC-based instruction set architectures, processor-based devices, integrated circuits, computer hardware, computer software, integrated circuit based devices, electronic devices that send and receive data in a connected network, microprocessor cores, macro cells, microcontrollers, bus interfaces and printed circuit boards” (in part) (Registration No. 4980650).
The attached Internet evidence, consisting of websites from Tencent Cloud, T-Mobile, and IBM, establishes that the same entity commonly provides streaming services of data as well as data transmission services under the same mark. 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
Because the marks are similar and applicant’s and registrant’s respective goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Therefore, applicant’s mark is refused registration for Class(es) 38 under Trademark Act Section 2(d).
BASIS REQUIRED
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action.
Edward Payabyab
/Edward Payabyab/
Trademark Examining Attorney
Law Office 128
(571) 272-0021
edward.payabyab@uspto.gov
RESPONSE GUIDANCE
