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. 79255684
MARK: HELIUM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Carat Lane Trading Private Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1459094
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Please note the following issues:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1344715. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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 any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, 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). Additionally, 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).
Comparison of the marks
In the present case, applicant’s mark is HELIUM and registrant’s mark is HELIUM. 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.
Comparison of the Goods/Services
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The applicant’s goods/services are described as:
Articles of jewellery; anklets [jewelry]; anklets [jewellery]; amulets [jewelry]; amulets [jewellery]; agate jewelry; agate jewellery; cabochons for making jewellery; brooches [jewellery]; bronze jewellery; bracelets made of embroidered textile [jewellery]; bracelets [jewelry]; beads for making jewellery; articles of jewelry; children's jewellery; charms for jewellery; chains [jewelry]; chains [jewellery]; ear ornaments in the nature of jewellery; diamond jewelry; diamond jewellery; decorative pins [jewelry]; decorative pins [jewellery]; decorative brooches [jewellery]; decorative brooches [jewelry]; custom jewellery; crystal jewellery; crucifixes of precious metal, other than jewellery; costume jewellery; gold jewellery; jewellery boxes of precious metals; jewellery articles; jewellery; imitation stones for making jewellery; imitation jewellery; jade jewellery; ivory jewelry; jewellery clasps; jewellery chains of precious metal for bracelets; jewellery chains; jewellery caskets; jewellery made from gold; jewellery for women; jewellery for the head; jewellery for men; jewellery for children; jewellery findings; jewellery rings; jewellery presentation boxes; jewellery, precious stones; jewellery, precious and semi-precious stones; jewellery plated with precious metals; jewellery ornaments; jewellery made of silver; jewellery made of plated precious metals; jewellery made of gold; jewelry brooches; jewellery stickpins; jewelry made from gold; jewelry made from silver; jewelry chains of precious metal for bracelets; jewelry caskets of precious metal; jewelry watches; necklaces [jewellery]; men's jewelry; pendants [jewelry] in Class 14; and
Retail services for jewellery; online wholesale store services featuring jewelry; online retail store services featuring jewelry; online retail services relating to jewelry; online retail services relating to jewellery; on-line wholesale store services featuring jewelry; on-line retail services relating to jewellery; advertising services relating to jewellery in Class 35
The registrant’s goods are described as:
DENIM JEANS, COLORED CRINKLE DENIM JEANS, NON DENIM JEANS (COTTON, TWILL), WORKSHIRTS, (WOVEN TOPS), KNIT SWEATSHIRTS, LACE TANK TOPS, DENIM JACKETS, NOVELTY ACTIVE JACKETS in Class 25
The goods/services of the parties are related because they are the type of goods/services that are likely to emanate from the same source, under the same mark since parties that offer clothing goods often offer jewelry or retail store services featuring jewelry.
For example, the third party websites listed below all show parties that offer both jewelry and clothing:
http://bananarepublic.gap.com/browse/category.do?cid=13915 (offering both clothing and jewelry under the Banana Republic brand)
http://www2.hm.com/en_us/ladies/products/accessories.html (offering both clothing and jewelry under the H&M brand)
http://www.armaniexchange.com/us (offering both clothing and watches under the Armani Exchange brand)
http://www.forever21.com/us/shop/catalog/category/f21/acc_jewelry and http://www.forever21.com/us/shop/catalog/category/f21/bottoms (offering both clothing and watches under the Forever 21 brand)
Here, the marks are identical and the evidence discussed above shows that the goods/services of the parties are related. As such, the mark is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
MARK DESCRIPTION
The following description is suggested, if accurate: The mark consists of the stylized word “HELIUM”.
IDENTIFICATION OF GOODS/SERVICES
The identification of goods/services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses.
Please note that suggestions that would make the identification of goods/services definite have been provided below in bold and the reasoning for these suggestions have been provided in brackets.
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.
Applicant may substitute the following wording, if accurate:
Articles of jewelry {either delete the wording “articles of” list each article by its common commercial name}; anklets being jewelry {delete the brackets and incorporate the information contained therein into the description}; anklets being jewelry; amulets being
jewelry; amulets being jewelry; agate jewelry; agate jewelry; cabochons for making jewelry; brooches being jewelry; bronze jewelry; bracelets made of
embroidered textile being jewelry; bracelets being jewelry; beads for making jewelry; articles of jewelry; children's jewelry;
charms for jewelry; chains being jewelry; chains being jewelry; ear ornaments in the nature of jewelry; diamond jewelry; diamond jewelry; decorative pins
being jewelry; decorative pins being jewelry; decorative brooches being jewelry; decorative brooches being jewelry;
custom jewelry; crystal jewelry; crucifixes of precious metal, other than jewelry; costume jewelry; gold jewelry; jewelry boxes of precious metals; jewelry articles;
jewelry; imitation stones for making jewelry; imitation jewelry; jade jewelry; ivory jewelry; jewelry clasps; jewelry chains of precious metal for bracelets; jewelry chains; jewelry caskets; jewelry
made from gold; jewelry for women; jewelry for the head; jewelry for men; jewelry for children; jewelry findings; jewelry rings; jewelry presentation boxes; jewelry, precious stones; jewelry,
precious and semi-precious stones; jewelry plated with precious metals; jewelry ornaments; jewelry made of silver; jewelry made of plated precious metals; jewelry made of gold; jewelry brooches;
jewelry stickpins; jewelry made from gold; jewelry made from silver; jewelry chains of precious metal for bracelets; jewelry caskets of precious metal; jewelry watches; necklaces being jewelry; men's jewelry; pendants being jewelry in Class 14
Retail store services for jewelry {describe the type of retail services in more detail}; online wholesale store services featuring jewelry; online retail store services featuring jewelry; online retail store services relating to jewelry; online retail store services relating to jewelry; on-line wholesale store services featuring jewelry; on-line retail store services relating to jewelry; advertising services relating to jewelry in Class 35
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Ahsen Khan/
Trademark Attorney
United States Patent & Trademark Office
Law Office 113
ahsen.khan@uspto.gov
571 272 4343
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.