To: | Xian Nanjun (ip@afnlegal.com) |
Subject: | U.S. Trademark Application Serial No. 90158508 - BLUETOOTH MICROPHONE - N/A |
Sent: | January 08, 2021 03:40:28 PM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90158508
Mark: BLUETOOTH MICROPHONE
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Correspondence Address:
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Applicant: Xian Nanjun
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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.
Issue date: January 08, 2021
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.
Refusal under Section 2(d) – 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/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.
The applicant has applied to register the mark BLUETOOTH MICROPHONE for “puzzles; amusement park rides; children's educational toys for developing fine motoring skills, cognitive skills, counting skills; dolls and playsets therefor; educational toys for teaching music principles to children, namely, hand-held music notation symbols and music related figures, such as individual hand-held piano keys; electronic novelty toys, namely, toys that electronically record, play back, and distort or manipulate voices and sounds; infant toys; inflatable pool toys; pet toys; plush toys; portable musical toys incorporating telecommunication functions; PVC toy figures; toy building blocks; toy mobiles; toy telescopes.” Registration No. 4818161is for the mark B BLUETOOTH SMART (and Design) for and variety of goods, including, “thermometers; security sensors, sensors for determining position, velocity, acceleration and distance; baby monitors; electronic key cards and key fobs; global positioning system (GPS); GPS tracking device to be worn on the wrist of an athlete during endurance events; electronic non-medical portable devices primarily for measuring, storing, transferring and synchronizing information about an individual's physical exercise and activity levels, namely, date, time, global positioning, direction, altitude, speed, distance, and calorie consumption; pedometer; digital scales; computer mice; game controllers for computer and video games; remote controls for televisions, stereos, digital cameras, digital video cameras, DVD players and game consoles; portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files”
Similarity of the Marks
The marks share the dominant element BLUETOOTH which create the same overall commercial impression in both marks. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Moreover, the registrant has disclaimed the term SMART leaving BLUETOOTH the primary component of its mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/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).
Relatedness of the Goods
Here is must be presumed that the goods are complimentary and that most, if not all of applicant’s goods will use or contain registrant’s BLUETOOTH SMART components. Where evidence shows that the goods 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. 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). See the attached taken from www.amazon.com indicating that a variety of toy products contain BLUETOOTH SMART technology and devices or connect to BLUETOOTH SMART devices.
The attached Internet evidence establishes that the goods are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods 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
The marks share the identical dominant element – BLUETOOTH. The goods are complimentary and often sold or used together. The similarities between the marks and the goods are so great as to create a likelihood of confusion. 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).
Refusal under Section 2(e)(1) – Mark is Descriptive
The applicant has applied to register the mark BLUETOOTH MICROPHONE for “puzzles; amusement park rides; children's educational toys for developing fine motoring skills, cognitive skills, counting skills; dolls and playsets therefor; educational toys for teaching music principles to children, namely, hand-held music notation symbols and music related figures, such as individual hand-held piano keys; electronic novelty toys, namely, toys that electronically record, play back, and distort or manipulate voices and sounds; infant toys; inflatable pool toys; pet toys; plush toys; portable musical toys incorporating telecommunication functions; PVC toy figures; toy building blocks; toy mobiles; toy telescopes.” It must be presumed that a feature of applicant’s goods is BLUETOOTH technology and microphones. See attached dictionary definitions for “Bluetooth” and “microphone.”
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
For the reasons stated the mark BLUETOOTH MICROPHONE is descriptive of presumed features of applicant’s goods and as such is unregistrable on the Principal Register.
Inquiry of Meaning or Significance/Request for Product Information
(1) Explain whether the wording “BLUETOOTH,” “MICROPHONE,” and/or “BLUETOOTH MICROPHONE” in the mark has any meaning or significance in the trade or industry in which applicant’s goods are manufactured or provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
(2) Respond to the following questions:
Will any of the applicant’s goods be or contain microphones? If so, identify which goods.
Will any of the applicant's goods utilize BLUETOOTH technology or contain BLUETOOTH devices? If so, identify which goods.
See 37 C.F.R. §2.61(b); TMEP §814.
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Negative Translation Statement not Printed
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.
Watson, Julie
/Julie Watson/
Trademark Examining Attorney
Law Office 109
571-272-9236
julie.watson@uspto.gov
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