To: | LG ELECTRONICS INC. (mailroom@bskb.com) |
Subject: | U.S. Trademark Application Serial No. 90168739 - HEXA MOTION STABILIZER - 0465-7867US1 |
Sent: | January 13, 2021 10:41:59 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90168739
Mark: HEXA MOTION STABILIZER
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Correspondence Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 GATEHOUSE ROAD, SUITE 100 EAST
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Applicant: LG ELECTRONICS INC.
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Reference/Docket No. 0465-7867US1
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 13, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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 mark in U.S. Registration No. 5415354. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is HEXA MOTION STABILIZER for use with “Smart phones; Mobile phones; Computers; Tablet computers; Data processing apparatus; Apparatus for recording, transmission or reproduction of sound or images; Photographic apparatus and instruments; Electrical communication machines and instruments; Cameras for smartphone; Smartphone camera lenses; Video cameras; Cameras; Camera lenses; Zoom lenses for cameras; Interface circuits for cameras; Stands adapted for mobile phones; Selfie sticks used as smartphone accessories; Cases adapted for smartphones; Electronic sensors; Digital sensory devices; Touch screen sensor; Gyro sensors; Acceleration sensors; Downloadable software applications for mobile phones, namely, software for reducing shaking when taking images and videos; Recorded software applications for mobile phones, namely, software for reducing shaking when taking images and videos; Smartphone application software for camera function” in International Class 9.
Registrant’s mark is HEXA (and design) for use with “Computer touchscreens; Laptop computers; Tablet computers; Electronic device to charge and secure tablet PCs, namely, charging stations for tablet computers; phablets; stands adapted for tablet computers” in International Class 9.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s and registrant’s marks are similar in appearance, sound, meaning and overall commercial impression because applicant’s mark merely adds descriptive wording to the wording portion of the registered mark. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The wording “MOTION STABILIZER” merely describes characteristics of the goods and thus does not alter the overall commercial impression created by the identical wording. 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). The descriptive wording “MOTION STABILIZER”, which must be disclaimed, does not obviate the similarity of the marks created by the identical wording “HEXA”.
Finally, the design element of the registered mark comprised of a hexagon also does not obviate the similarity of the marks. 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 addition to being less significant than the wording of the registered mark, the design of the hexagon only reinforces the commercial impression of six created by the wording “HEXA”.
Because the overall commercial impressions of the marks are similar, the marks are confusingly similar.
Relatedness of the Goods
The goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
The touch screen, computer, and stands are identical. The remaining broadly identified goods are encompassing of the goods identified in the registration, such as “photographic apparatus and instruments” and “electrical communication machines and instruments.” Finally, the sensors and software are goods used with or as components of the goods identified in the registration
Thus, applicant’s and registrant’s goods are related.
Conclusion
Because the marks are confusingly similar and the goods are related, registration is refused under Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal
The attached evidence shows that the term “motion stabilizer” is used to describe mounts or stands as well as components of electronic devices. See attached http://magnanimousrentals.com/rental/movi-m15-motion-stabilizer-kit/436 and http://www.amazon.com/Tristar-Clear-Dash-X3000-Stabilizer/dp/B0731NMCDM. Thus, the wording merely describes a characteristic or function of the identified goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MOTION STABILIZER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
OVERBROAD AND INDEFINITE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
The wording “Electrical communication machines and instruments” in the identification of goods is indefinite and must be clarified because the specific machines and instruments must be listed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Electronic sensors; Digital sensory devices; Gyro sensors” in the identification of goods is indefinite and must be clarified because the use of the sensors must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Amendments
Applicant may substitute the following wording, if accurate:
Class 9 –
Smart phones; Mobile phones; Computers; Tablet computers; Data processing apparatus; Apparatus for recording, transmission or reproduction of sound or images; Photographic apparatus and instruments, namely, [specify the apparatus and instruments, e.g., cameras, etc.]; Electrical communication machines and instruments, namely, [specify the machines and instruments, e.g., modems, etc.]; Cameras for smartphone; Smartphone camera lenses; Video cameras; Cameras; Camera lenses; Zoom lenses for cameras; Interface circuits for cameras; Stands adapted for mobile phones; Selfie sticks used as smartphone accessories; Cases adapted for smartphones; Electronic sensors for [indicate what is being sensed]; Digital sensory devices, namely, [clarify nature of the goods, e.g., motion sensors, photoelectric sensors, etc.]; Touch screen sensor; Gyro sensors being electronic sensors for [clarify use, e.g., motion recognizing, etc.]; Acceleration sensors; Downloadable software applications for mobile phones, namely, software for reducing shaking when taking images and videos; Recorded software applications for mobile phones, namely, software for reducing shaking when taking images and videos; [specify format, e.g., downloadable, recorded, etc.] Smartphone application software for camera function
Class 42 –
Providing online non-downloadable smartphone application software for camera function
Amendment Guidelines
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
REQUIREMENT – SPECIFY NUMBER OF CLASSES SOUGHT FOR REGISTRATION
The application identifies goods that may be classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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.
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.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE