To: | OnePlus Technology (Shenzhen) Co., Ltd. (notice@paiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 90508267 - SPEAK NOW - N/A |
Sent: | January 26, 2022 04:10:32 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90508267
Mark: SPEAK NOW
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Correspondence Address: 16830 VENTURA BLVD., SUITE 360
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Applicant: OnePlus Technology (Shenzhen) Co., Ltd.
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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 26, 2022
This application was approved for publication on September 22, 2021. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
SUMMARY OF ISSUES:
THIS PARTIAL REFUSAL APPLIES ONLY TO THE APPLICANT’S SMARTPHONES, COVERS FOR SMARTPHONES, CASES FOR SMARTPHONES, PROTECTIVE FILMS ADAPTED FOR SMARTPHONES, STANDS ADAPTED FOR MOBILE PHONES, SELFIE STICKS, EARPHONES, USB CABLES, AND CHARGERS FOR SMARTPHONES AND DOES NOT BAR REGISTRATION FOR THE OTHER GOODS.
Section 2(d) Partial Refusal-Likelihood of Confusion Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 4077253. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
In the present case, the applicant’s mark is SPEAK NOW for, in relevant part, “smartphones; covers for smartphones; cases for smartphones; Protective films adapted for smartphones; Stands adapted for mobile phones; selfie sticks; Earphones; USB cables; Chargers for smartphones” in International Class 009.
The registered mark is SPEAK NOW for, in relevant part, “Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile telephones, portable media players, laptop computers, mobile computers” in International Class 009.
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 the present case, applicant’s mark is SPEAK NOW and registrant’s mark is SPEAK NOW. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The applicant’s goods are, in relevant part, “smartphones; covers for smartphones; cases for smartphones; Protective films adapted for smartphones; Stands adapted for mobile phones; selfie sticks; Earphones; USB cables; Chargers for smartphones”.
The registrant’s goods are, in relevant part, “Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile telephones, portable media players, laptop computers, mobile computers”.
These goods are related because they are mobile telephones and accessories for mobile devices.
The applicant’s covers for smartphones and protective films adapted for smartphones are identical or virtually identical to the registrant’s fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile telephones, portable media players, laptop computers, mobile computers.
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
In addition, applicant’s smartphones, cases for smartphones, stands adapted for mobile phones, selfie sticks, earphones, USB cables and chargers for smartphones are related to registrant’s fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile telephones, portable media players, laptop computers, mobile computers. The attached Internet evidence, consisting of screenshots from third-party websites, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
For the reasons discussed above, the goods of the parties are related.
Response Guidelines and Partial Abandonment Advisory
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the goods to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 009 will be deleted from the application: smartphones, covers for smartphones, cases for smartphones, protective films adapted for smartphones, stands adapted for mobile phones, selfie sticks, earphones, USB cables, and chargers for smartphones. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a). The application will then proceed with the following goods in International Class 009 only: Downloadable intelligent personal assistant software for voice recognition, natural language processing, searching the internet for traffic and weather information and appointment reminder; downloadable speech to text conversion software; downloadable computer software used to process voice commands, and create audio responses to voice commands; downloadable computer software for enabling hands-free use of a mobile phone through voice recognition; downloadable computer application for mobile phones, namely, software for voice recognition, natural language processing, searching the internet for traffic and weather information and appointment reminder; smartwatches; downloadable computer chatbot software for simulating conversations; dictating machines; Television sets; electronic book readers; Set-top boxes; Cameras; Audiovisual receivers; video screens; remote controls for televisions; electrical adapters; Power adapters; rechargeable batteries; batteries, electric. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
/Mahreen Gillani/
Mahreen Gillani
Trademark Examining Attorney
Law Office 109
(571)272-9704
Mahreen.Gillani@uspto.gov
RESPONSE GUIDANCE