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. 97045431
Mark: SAMSUNG
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Correspondence Address:
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Applicant: Samsung Electronics Co., Ltd.
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Reference/Docket No. 085697017400
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.
The assigned examining attorney has reviewed the referenced application and the Voluntary Amendment and determined the following.
I. LIKELIHOOD OF CONFUSION:
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant's mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 4,677,133, 4,771,162, 4,771,163 & 5,899,721 (owned by the same owner) as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case (as with other cases) involves at minimum a two-part analysis. First, the marks are compared in their ‘entireties’ for similarities in sound, appearance, meaning/connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Second, the goods and/or services are compared to determine whether they are similar or 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, (a)(vi). The key concern is whether confusion as to the source of the goods/services is likely.
- COMPARISON OF THE MARKS:
The examining attorney must compare the marks in their entireties for similarities in sound, appearance, meaning/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).
A comparison of the applicant’s mark SAMSUNG (stylized) and the registered marks:
- ‘133 SAMSUNG & Design,
- ‘162 SAMSUNG,
- ‘163 SAMSUNG & Design, &
- ‘721 SAMSUNG
shows that the applicant’s mark is identical in sound and meaning (and virtually identical in literal appearance)[1] and, thus, overall commercial impression, with all the registered marks in that the applicant has appropriated the same sole wording in each registered mark SAMSUNG to form the sole wording in its mark. Such an appropriation does not alter the overall similar commercial impressions of the applicant’s mark vis-à-vis the registered marks to obviate concerns of likelihood of confusion. Therefore, it stands to reason that purchasers who are familiar with the registered marks (again, owned by the same owner) would assume that the applicant’s mark simply reflects a new or alternative product offered by the common registrant under its dominant “SAMSUNG” based brand name.
Further, when evaluating a composite mark consisting of word(s) 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)). As such, the addition of the minimal design element in the applicant’s mark and in registrations ‘133 & ‘163 does not minimize the similarity between the marks.
- COMPARISON OF THE GOODS/SERVICES – in part as to:
- ‘133 SAMSUNG & Design v. IC 36,
- ‘162 SAMSUNG v. ICs 35 & 41,
- ‘163 SAMSUNG & Design v. ICs 35 & 41, &
- ‘721 SAMSUNG v. IC 44
The applicant’s services and the respective services in the registered marks are related in that applicant’s:
- Class 36 “insurance agency services” are broader than and subsume the Class 36 insurance services in registration ‘133.
If the applicant deletes its ‘insurance agency services,’ the undersigned will withdraw this refusal;
- Class 35 retail store services feature virtually the identical goods in part as in the identically worded retail store services in ‘162 & ‘163, as well as, the related demonstration services for such goods. Further, in regards to applicant’s electronic/IT goods and the registrant offering electronic/IT support software, it is noted that these are related in that those who produce and offer for sale mobile/electronic devices also routinely issue supporting software for the use, maintenance, troubleshooting, updating, etc. of same. In fact, many such software updates are automatically pushed by such providers to these devices. In this regard, please see the attached evidence from www.apple.com of software http://support.apple.com/downloads and (i) smart phones http://www.apple.com/iphone/ and (ii) tablet computers http://www.apple.com/ipad/?afid=p238%7CsyUcsKPi4-dc_mtid_1870765e38482_pcrid_569734191359_pgrid_101103949416_&cid=aos-us-kwgo-ipad--slid---product- all sold under the same APPLE brand.
Class 41 services in part related to education/news/entertainment “computer education training services; correspondence schools; education in the form of classes in the field of design; education in the form of seminars in the field of design; entertainment in the nature of fashion shows; entertainment in the nature of television news shows; news agencies, namely, gathering and dissemination of news; production of radio and television programs” are related to the identically worded Class 41 services in ‘162 & ‘163 in that the registrant provides information/blogs/news regarding the above subject matters and also organizes special events (which could include fashion shows) and provides “multimedia entertainment production” (which could include applicant’s entertainment production services).
As with above, if the applicant deletes these services, the undersigned will withdraw this refusal as to Class 41 (only), however, if the applicant does the latter and also deletes Class 35, then this refusal will be withdrawn as a whole; and
- Class 44 services are identical in part as to “hospital services” in ‘721 and registrant’s physical examination services encompass applicant’s various medical services as those are merely examples of same. Further, the registrant’s medical information services (at minimum) are also related to all of applicant’s medical services in that those who provide medical care also hand-in-hand provide medical information.
As discussed above, the undersigned will withdraw this refusal if the applicant only maintains “landscape gardening” in its identification and deletes all other services.
Therefore, the applicant’s respective services are highly likely to be encountered by the same purchasers of the respective services in the registered marks (as stated above).
Consequently, there is a likelihood of confusion as between the applicant’s mark and the registered mark(s).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
- OWNERSHIP OF CITED REGISTRATION(S) - To Overcome the Refusal:
(1) Record the assignment(s) with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:
Applicant is the owner of U.S. Registration No(s). 4,677,133, 4,771,162, 4,771,163 & 5,899,721.
To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
II. IDENTIFICATION OF GOODS/SERVICES - Indefinite in Part (Classes 35, 41 & 42):
The identification of goods and/or services is unacceptable as indefinite in part Classes 35, 41 & 42 because it lacks sufficient specificity and because the goods/services fall into additional classes. Specifically, applicant must either delete the confusing, unnecessary and duplicative wording “being demonstration of goods” in Class 35 or clarify otherwise, clarify the “computer hardware consulting” and “troubleshooting” services as those could also fall in Class 37, and provide the subject matter/field of the education services (as discussed in detail below). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. As such, applicant must amend the identification to make it definite along the lines suggested below. Accordingly, applicant may adopt the following identification, if accurate:
- Off-line retail store services and demonstration services relating to mobile phones, smart phones, tablet computers, mobile internet devices, headsets, cameras, computers, electronic home appliances, television receivers, computer monitors, home theater systems, DVD players, optical disk players, eyeglasses, 3D glasses, USB cards, modems, electric mobile phone battery chargers, digital set-top boxes, hard disc drives, optical disc drives, notebook computers, printers for computers, personal digital assistants, facsimile machines, cash registers, amusement apparatus adapted for use with television receivers only, video telephones, video tape recorders, MP3 players, portable multimedia players, audio speakers for computers, compact disc players, movie projectors, video recorders and video disc players, in International Class 35;
- Computer hardware __________ (please specify, for example, installation, repair, etc.) consulting services; technical troubleshooting support, namely, repairing of handheld mobile digital electronic devices and other consumer electronics, and providing consulting services about same, in International Class 37;
- Administration of lotteries for others; amusement parks; computer education training services; conducting lotteries for others; correspondence schools; country clubs; education in the form of classes in the field of __________ (please specify, for example, new product, clothing, etc.) design; education in the form of seminars in the field of design; entertainment in the nature of fashion shows; entertainment in the nature of television news shows; botanical gardens; gymnasiums; lottery services; movie theaters; news agencies, namely, gathering and dissemination of news; production of radio and television programs; publication of books; publication of magazines; record production; rental of show scenery; videotaping; vocational guidance, in International Class 41; and
- Computer hardware __________ (please specify, for example, design, development, etc.) consulting services; Computer software consulting services; computer programming; computer services, namely, creating an on-line community for registered users to participate in discussions, share recommendations, get feedback from their peers, form virtual communities, and engage in social networking featuring social media and topics on books, newsletters, magazines and other print media; computer services, namely, providing search engines for obtaining data via electronic communications networks; creating and maintaining web-sites; design and development of web-sites featuring multimedia materials; design, development, maintenance and management of application software for mobile phones , personal computers, portable computer, TV and MP3 player; hosting of websites providing digital contents; hosting the web-sites of others; internet services, namely, creating indexes of information, sites and other resources available on global computer networks for others; searching, browsing and retrieving information, sites, and other resources available on global computer networks and other communication networks for others; maintenance, repair and updating of computer software, computer operating system software, computer utility software; providing technical troubleshooting support, namely, __________ (please specify, for example, diagnosing, repairing, etc.) computer software problems and computer software problems regarding handheld mobile digital electronic devices and other consumer electronics, and providing consulting services about same; providing information concerning the design, installation, updating and maintenance of computer software via the internet and other computer and communication networks; searching and retrieving information, sites, and other resources available on global computer networks and other electronic communication networks for others; technical support, namely, providing advice for developing computer systems and databases, and providing consulting about same; technical support services, namely, troubleshooting in the nature of diagnosing and repairing application software problems for mobile phones, personal computers, portable computer, TV and MP3 player, in International Class 42.
Please note, all goods/services in all other Classes are acceptable as filed.
PTO ONLINE SEARCHING MANUAL:
For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
III. CLASSIFICATION OF GOODS/SERVICES:
IV. ADDITIONAL CLASSES:
If the applicant prosecutes this application as a combined, or multiple-class, application, the applicant must comply with each of the following:
(1) The applicant must list the goods and/or services by their international class number (as listed above); and
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid (USPTO’s current fee schedule). The applicant has already submitted a filing fee for nine classes.
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)/Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
V. FOREIGN APPLICATION “NOT” FROM COUNTRY OF ORIGIN:
To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01. Under Section 44(c), “country of origin” is defined as the country in which an applicant:
(1) is domiciled,
(2) has a bona fide and effective industrial or commercial establishment, or
(3) is a national. 15 U.S.C. §1126(c); TMEP §1002.04.
Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04.
Thus, to overcome this refusal, applicant may provide the following written statement for the record:
Applicant has had a bona fide and effective industrial or commercial establishment in the United Kingdom as of the date of issuance of the foreign registration. TMEP §1002.04.
If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and substitute Section 1(a) or 1(b), if applicant can satisfy all the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §§806.03, 1002.01.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/KaranChhina/
Karanendra S. Chhina
Trademark Attorney
Law Office 114
(571) 272-9447
karan.chhina@uspto.gov
RESPONSE GUIDANCE
