Apple Inc. IPHONE Likelihood of Confusion office action example 2007 (PART I Office action)

This is the FIRST office action that the iconic iPhone trademark received. Next post is the response text, a great example or sample of a trademark office action response.

UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/078496
APPLICANT: Ocean Telecom Services LLC
*77078496*

CORRESPONDENT ADDRESS:
JAMES JOHNSTON
OCEAN TELECOM SERVICES LLC
1208 ORANGE STREET
CORPORATION TRUST CENTER, ROOM 123
WILMINGTON, DE 19801

RETURN ADDRESS:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

MARK: IPHONE

CORRESPONDENT’S REFERENCE/DOCKET NO : N/A

CORRESPONDENT EMAIL ADDRESS:
jjohnstonoctelecom@gmail.com

Please provide in all correspondence:
1. Filing date, serial number, mark and
applicant's name.
2. Date of this Office Action.
3. Examining Attorney's name and
Law Office number.
4. Your telephone number and e-mail
address.

OFFICE ACTION
RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE
ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this
information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the
prosecution history for the mailing date of the most recently issued Office communication.

Serial 77/078496

The assigned examining attorney has reviewed the application and determined the following:

REFUSAL-LIKELIHOOD OF CONFUSION

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2293011. Trademark
Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.

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
in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case,
depending upon the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). In this case, the
following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the
goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB
1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998);
TMEP §§1207.01 et seq.

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the
marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or
whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222
USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp. , 197 USPQ 910 (TTAB 1978);
Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

A. Similarity between the Marks

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse
people into believing that the goods they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558
(C.C.P.A. 1972). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-
side comparison. The question is whether the marks create the same overall impression. Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d
1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of
the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling &
Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

The registered mark is IPHONE and the applicant’s mark is IPHONE. The marks of the parties are the same in sound and commercial
impression. If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not
be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

B. Similarity between the Goods/Services

The registrant’s goods are hardware and software goods for providing integrated telecommunications. The applicant’s services are: design and
development of computer hardware and software; computer hardware and software consulting services; multimedia and audio-visual software
consulting services; computer programming; support and consultation services for developing computer systems, databases and applications;
information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining
web-sites; provision of access time to web-sites featuring multimedia materials; providing search engines for obtaining data via communications
networks; providing databases and directories via communications networks for obtaining data in the fields of music, video, film, books,
television, games and sports; providing temporary use of on-line non-downloadable software to enable users to program audio, video, text and
other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related
programs; providing on-line facilities, via global computer network, to enable users to program the scheduling of audio, video, text and other
multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs
as they will be aired; providing search engines for obtaining data on a global computer network; creating indexes of information, sites and other
resources available on global computer networks for others; providing users with access time to electronic communications networks with means
of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer
users; searching, browsing and retrieving information, sites, and other resources available on global computer networks for others; organizing
content of information provided over a global computer network according to user preference; providing computer data bases in the nature of a
bulletin board in the fields of music, video, film, books, television, games and sports; information, advisory and consultancy services relating to
all the aforesaid.

The goods and services of the parties are related and travel in similar channels of trade. The applicant’s services are all in the field of
communication and include hardware and software related services. The registrant’s goods include hardware and software for
telecommunication purposes.

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP
§§1207.01(d)(i).

Prior Pending Applications

Information regarding pending Application Serial Nos. 78581563 and 78860258 is enclosed. The filing dates of the referenced applications
precede applicant’s filing date. There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the
referenced marks. If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d). 37 C.F.R.
§2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final
disposition of the earlier-filed applications.

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present
arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s
right to address this issue at a later point.

Applicant should note the following additional ground for refusal.

Refusal-Mark is Merely Descriptive

Registration is refused because the proposed mark merely describes the purpose of applicant’s goods and/or services. Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re
MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes
an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield
Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435
(TTAB 1966).

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In
re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the
“documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242
(TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs
actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of
operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).
The examining attorney has determined that the proposed mark is merely descriptive of a feature and purpose of the services. The examining
attorney encloses dictionary evidence for the wording “I” and phone. The recitation of services indicates that Internet communications are a
feature of the services.

For the purpose of a Section 2(e)(1) analysis, a term need not describe all of the purposes, functions, characteristics or features of the goods
and/or services to be merely descriptive. In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001). It
is enough if the term describes only one significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the
applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001)). Based upon the evidence, the mark is refused registration under Section 2(e)(1) of the Trademark Act.

Informalities

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. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the
following issues.

Recitation of Services

Applicant must clarify the identification of services by clarifying indefinite wording and identifying the services by common commercial name.
TMEP §1402.01. In addition, certain services are classified incorrectly. Applicant must amend the application to classify the services in the
correct International Class. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable

Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.
The applicant may adopt the following, if accurate:

Rental of access time to the Internet for accessing web-sites featuring multimedia materials; rental of access time to the Internet for
identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and
computer users; providing online bulletin boards for the transmission of messages among users in the fields of music, video, film, books,
television, games and sports and providing consultation services in the field of rental of access time to the Internet and provision of online
bulletin boards for the transmission of messages . (Class 38).

Providing databases via communications networks in the fields of music, video, film, books, television, games and sports and consultation
services in the field of providing databases in the fields of music, video, film, books, television, games and sports. (Class 41).

Design and development of computer hardware and software; computer hardware and software consulting services; multimedia and audio-
visual software consulting services; computer programming; technical support, namely, {indicate services, e.g., troubleshooting computer
system problems} and technical consultation services for developing computer systems, databases and applications; computer
programming information (indicate type of information} relating to computer hardware or software provided on-line from a global
computer network or the Internet; creating and maintaining web-sites for others; providing search engines for obtaining data via
communications networks; providing temporary use of on-line non-downloadable software to enable users to program audio, video, text
and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-
related programs; computer services, namely, hosting on-line facilities, via global computer network, to enable users to program the
scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games,
cultural events, and entertainment-related programs as they will be aired; providing search engines for obtaining data on a global computer
network; creating indexes of information, sites and other resources available on global computer networks for others; customized searching
at the specific request of end users for information, sites, and other resources available on global computer networks; acting as an
application service provider in the field of knowledge management to host computer application software for searching and retrieving
information from databases and computer networks; computer services, namely, creating indexes for organizing content of information
provided over a global computer network according to user preference and providing consultation services in the aforementioned fields.
(Class 42).
TMEP §1402.01.

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the
scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include
services that are not within the scope of the services set forth in the present identification.

Requirements for a Combined Application-Section 1(b)
If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those
goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee
information should be confirmed at http://www.uspto.gov).
37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at
http://www.uspto.gov/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

Signed Verification Required

The application was not signed and verified, which are application requirements. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R.
§§2.33-2.34. Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §2.20, the following statement: “Applicant
has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as
of the filing date, and the facts set forth in the application are true and correct.” 37 C.F.R. §2.193(c)(1)(iii); TMEP §804.02.
If applicant responds to this Office action via TEAS, applicant may satisfy this requirement by adding the required statement (specified
immediately above) to the TEAS response form, checking the box for a “signed declaration,” and properly signing the form by either (1)
choosing an electronic signature consisting of any combination of letters, numbers, spaces and/or punctuation marks, preceded and followed by
the forward slash (/) symbol (e.g., /johndoe/), and entering this in the signature block on the response form, or (2) attaching a JPG or PDF image
of a declaration under 37 C.F.R. §2.20 (see declaration paragraph below) together with a pen-and-ink signature. TMEP §804.05.
If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following
declaration at the end of the response, properly signed and dated:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both,
under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting
registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to
be entitled to use such mark in commerce; that applicant has had a bona fide intention to use the mark in commerce on or in connection with
the goods and/or services listed in the application as of the filing date; that the facts set forth in the application are true and correct; that to
the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in
the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such
other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all
statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Conclusion
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark
examining attorney directly at the number below.
/Linda Michelle Estrada/
Trademark Attorney, Law Office 104
U.S. Patent & Trademark Office
(571) 272-9298
(571) 273-9104 Fax

HOW TO RESPOND TO THIS OFFICE ACTION:
ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action
form available on our website at http://www.uspto.gov/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after
receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail.

THE USPTO WILL NOT ACCEPT AN E-
MAILED RESPONSE.
REGULAR MAIL RESPONSE: To respond by regular mail, your response should be sent to the mailing return address above, and
include the serial number, law office number, and examining attorney’s name. NOTE: The filing date of the response will be the date
of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval
(TARR) system at http://tarr.uspto.gov.

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded
online at http://portal.uspto.gov/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at
http://www.uspto.gov/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING
ATTORNEY SPECIFIED ABOVE.