United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90037487
Mark: PLUM
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Correspondence Address: BERNSTEIN, SHUR, SAWYER & NELSON
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Applicant: UVNV, INC.
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Reference/Docket No. N/A
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.
· Section 2(d) Refusal – Likelihood of Confusion
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 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 PLUM in stylized text with a design for “Providing access to telecommunication networks and Internet access to wireless spectrums for Internet of Things and business to business applications; providing business to business advisory services relating to telecommunications” in International Class 38.
Registrant’s mark in U.S. Reg. No. 3597484 is PLUM VOICE in standard characters for “Computer telephony software; Computer software used for the control of voice controlled information and communication devices” in International Class 9 and “Application service provider (ASP) featuring computer telephony software for use in voice communication services via computers” in International Class 42.
Registrant’s marks in U.S. Reg. Nos. 5203662, 5203663, 6016578, 6016579, 6016580, 6016581, 6016582, 6016583, 6016584, 6016607, 6016608, and 6016609, all for “Broadband wireless and telecommunications equipment, namely, data communications cases specially adapted for holding and protecting cellular antennas, wireless network antennas, global positioning system (GPS) antennas, power supplies, modems, and routers; specially configured data communications cases featuring built-in cellular antennas, wireless network antennas, global positioning system (GPS) antennas, power supplies, modems, and routers” in International Class 9, are as follows:
The marks in U.S. Reg. Nos. 5203662, 5203663, 6016578, 6016579, 6016580, 6016581, 6016582, 6016583, 6016584, 6016607, 6016608, and 6016609 are owned by the same entity.
Similarity 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 analysis, the term PLUM serves as the dominant portion of the applied-for mark. 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 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. 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)).
Similarly, the wording PLUM CASE PLUM LABORATORIES, LLC in U.S. Reg. No. 5203662 is accorded greater weight. However, registrant has disclaimed the wording CASE and LABORATORIES, LLC. Therefore, the term PLUM is the dominant portion of the registered mark. Disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
With respect to registrants’ marks in U.S. Reg. Nos. 3597484 (PLUM VOICE), 5203663 (PLUM CASE), 6016582 (PLUM ENTERPRISE), and 6016609 (PLUM PAK), registrants have also disclaimed wording. Specifically, the terms VOICE, CASE, ENTERPRISE, and PAK have been disclaimed. As such, the term PLUM is the dominant portion in each mark.
The dominant wording in applicant’s mark is therefore identical to the dominant wording in the registered marks in U.S. Reg. Nos. 3597484, 5203662, 5203663, 6016582, and 6016609.
To create the dominant PLUM portion of the applied-for mark, applicant has merely deleted wording from the registered marks in U.S. Reg. Nos. 3597484 (PLUM VOICE), 5203663 (PLUM CASE), 6016578 (PLUM EXTREME), 6016579 (PLUM BASIC), 6016580 (PLUM EXTENDED), 6016581 (PLUM ENHANCED), 6016582 (PLUM ENTERPRISE), 6016583 (PLUM PAK BASIC), 6016584 (PLUM PAK EXTENDED), 6016607 (PLUM JET), 6016608 (PLUM STAR), and 6016609 (PLUM PAK). Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Based on the foregoing, the applicant’s applied-for and registrants’ marks are sufficiently similar to find a likelihood of confusion.
Relatedness of the Goods and Services
Furthermore, the evidence also shows that registrant’s hardware items in U.S. Reg. Nos. 5203662, 5203663, 6016578, 6016579, 6016580, 6016581, 6016582, 6016583, 6016584, 6016607, 6016608, and 6016609 are related to applicant’s telecommunication services because applicant provides access to telecommunication networks and internet, while registrant’s goods serve as the tangible items used for connection. Where evidence shows that the goods and services at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
Based on the analysis above, applicant’s and registrants’ goods and services are related.
Because applicant’s and registrants’ marks are similar and the goods and 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.
Applicant should note the following potential ground for refusal.
Advisory: Prior Pending Applications
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Assistance
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.
Anicka Purath
/Anicka S. Purath/
Examining Attorney
Law Office 101
(571) 270-0622
anicka.purath@uspto.gov
RESPONSE GUIDANCE
