United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90324739
Mark: PLASMON PHOLED
|
|
Correspondence Address:
|
|
Applicant: Universal Display Corporation
|
|
Reference/Docket No. 10052.2808
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: May 12, 2021
I. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—LIMITED TO CLASS 7
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4251326. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant’s proposed mark is “PLASMON PHOLED” (standard character) used in connection with:
Class 7: Manufacturing machines and equipment for electronic devices, media, and components
The registrant’s mark is “PLASMON” (standard character) used in connection with:
Class 7: Semiconductor wafer processing equipment; Semiconductor wafer processing machines
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. 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.
A. 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). Here, the proposed mark is confusingly similar to the registered mark because “PLASMON” is identical.
For these reasons, the marks are similar.
B. Relatedness of the Goods
The goods at issue in the application are:
Class 7: Manufacturing machines and equipment for electronic devices, media, and components
The goods at issue in the registration are:
Class 7: Semiconductor wafer processing equipment; Semiconductor wafer processing machines
In this case, the application use(s) broad wording to describe electronics manufacturing machines, which presumably encompasses all goods of the type described, including registrant’s more narrow semiconductor wafer processing equipment. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
For these reasons, the goods are related.
C. Doubt Resolved in Favor of the Registrant
For the foregoing reasons, the applicant’s proposed mark is refused registration on the Principal Register under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
II. SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The applicant has applied to register “PLASMON PHOLED” (standard character) in connection with:
Class 7: Manufacturing machines and equipment for electronic devices, media, and components
Class 9: Light emitting diode displays for use in information or communication devices, media, and equipment
Class 40: Manufacturing services for others in the field of electronic devices, media, and components; manufacturing process consulting in the field of electronic devices, media, and components
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/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
“Plasmon” is “A quantum or quasiparticle associated with a local collective oscillation of charge density.” See attached evidence from Lexico. Wikipedia expands upon this definition by describing “plasmon” as, “plasmons are collective oscillations of the free electron gas density.” “Plasmons play a large role in the optical properties of metals and semiconductors.” Id. “Plasmonics” are devices are electro-optical devices that incorporate or utilize plasmons. Id. The applicant’s goods or services are or feature electro-optical devices that incorporate or utilize plasmons. See attached evidence from Google Patents featuring the applicant’s Korean and US patent applications; Facebook page. Finally, the evidence from ACS Publications, Nature, Phys.org, and ResearchGate shows the applicant’s goods or services feature plasmons. Because the applicant’s goods are or services feature plasmons, “PLASMON” merely describes a feature of or is generic for the applicant’s goods or services.
“PHOLED” is an acronym for “phosphorescent organic light-emitting diode.” See attached evidence from Acronym Finder and the applicant’s website. Because the “PHOLED” is an acronym for “phosphorescent organic light-emitting diode” and the applicant’s goods are or services feature phosphorescent organic light-emitting diodes, “PHOLED” merely describes a feature of or is generic for the applicant’s goods or services.
The composite result, “PLASMON PHOLED” does not create a meaning that is unique, incongruous, or nondescriptive when used in connection with the applicant’s goods or services. When used in connection with the applicant’s goods or services, the proposed mark means phosphorescent organic light-emitting diode goods or services that utilize a collective oscillation of free electron gas density. Because the composite mark does create a unique, incongruous, or nondescriptive meaning when used in connection with the applicant’s goods or services, the proposed mark is refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.
Generic Advisory
III. REQUIREMENT TO PROVIDE INFORMATION ABOUT THE GOODS & SERVICES
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
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. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
IV. REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS & SERVICES
Class 7
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 7: Manufacturing machines and equipment
for electronic devices, namely, LED devices and component parts
Class 9
Class 9 is sufficient as written.
Class 40
The wording “Manufacturing services for others in the field of electronic devices, media, and components” in the identification of services is indefinite and must be clarified because the nature of the services is not clear.
The wording “manufacturing process consulting in the field of electronic devices, media, and components” in the identification of services is indefinite and must be clarified because the nature of the services is not clear.
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 40: Manufacturing services for others in the field of
electronic devices, media, and electronic component parts; manufacturing process consulting in the field of electronic devices,
media, and electronic component parts
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.
How to respond. Click to file a response to this nonfinal Office action.
/Ryan Cianci/
Trademark Attorney
Law Office 116
571-270-3721
ryan.cianci@uspto.gov
RESPONSE GUIDANCE