Refusal based on "Likelihood of Confusion"

The US Patent and Trademark Office (USPTO) has refused to register Apple's "Touch ID" trademark based on there being a likelihood of confusion with the mark in U.S. Registration No. 2735480 as noted below.

USPTO states that "Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.

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.

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.

Applicant's mark is "KRONOS TOUCH ID". Registrant's mark is "TOUCH ID." Applicant's mark is similar in appearance and sound to registrant's mark in that they both share the common terms TOUCH ID.

The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. Applicant's mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark. In this case, applicant's mark merely deletes "KRONOS" from the registered mark.

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 non-descriptive meaning in relation to the goods and/or services."

All in all, USPTO's letter (Office Action Outgoing) to Apple covered the following: 1a. Likelihood of Confusion; 1b. Applicant's mark and Registered Mark are Similar; 1c The Goods are Related; 2a Refusal – Merely Descriptive; and 2b Identification of Goods – Infinite Wording.

An interesting point made by USPTO was in regard to "Infinite Wording." According to USPTO "In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" or "products," such words must be followed by "namely," followed by a list of the specific goods identified by their common commercial or generic names."

This is a point that we've made on several of Apple's trademark applications. They file some trademarks under International Classes with infinite wording. Everything is thrown at the trademark class with no distinction. Some classes would throw in everything but the kitchen sink and use descriptive terms like electric socks, dog whistles, and electrified fences when dealing with something such as "maps." In most cases the trademark is unique enough that USPTO will register it in spite of the "infinite wording" clause. However, in a case such as this current one, this particular practice of Apple's has to be called into question.

Apple has six months (up to Nov.7) to either fix their fingerprint trademark Touch ID problems as outlined by USPTO – which would likely require renaming this feature – or make Kronos an offer that they simply can't refuse to take ownership of the trademark. Time will tell which direction Apple will take.

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