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. 79294884
Mark: LEMON
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Correspondence Address:
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Applicant: Lemon Systems GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1553106
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL APPLIES TO CLASS 9 GOODS ONLY
Registration of the applied-for mark is refused with regard to the applicant’s Class 9 goods because of a likelihood of confusion with the mark in U.S. Registration No. 5527371 (LEMON). 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. 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.
The applied-for mark is LEMON in a stylized format with a design, for “Audiovisual teaching apparatus; children's educational software; computer software, recorded; computer programmes for interactive television and for interactive games and/or quizzes; games software; cell phones; downloadable software; downloadable interactive entertainment software for playing computer games; interactive multimedia software for playing games; software; software for interactive television; software programs for video games; software and applications for mobile devices; games software; education software” in International Class 9.
The registered mark is LEMON in a stylized format, for “Speakers, namely audio speakers; loudspeakers; wireless speakers; headphones; headsets; wireless headsets; earphones; earbuds; batteries; electrical power distribution units; photovoltaic cells, modules and inverters; audio cable connectors; apparatus for recording, transmission, reproduction of sound or music; portable digital electronic devices, namely audio speakers for recording, transmission or reproduction of sounds and music; electronic docking stations for digital music players; straps specially adapted for audio and loud speakers; cabinets for loudspeakers; protective cases for speakers; accessories for speakers, namely, batteries, wireless adapters, adapter rings for attaching objects to speakers, remote controls, microphones, secure digital memory (SD)cards, straps; digital music downloadable provided from the internet; musical instrument amplifiers; musical instrument connectors; portable music players; digital music players; downloadable music files; digital music downloadable from the Internet; computer software for processing digital music files; computer application software for broadcasting sound and music; computer software for creating, managing, updating and using music database; computer software for providing broadcasting sound and music; computer software for downloading sound and music” in International Class 9.
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).
The applied-for mark is LEMON in a stylized format with a design.
The registrant’s mark is LEMON in stylized lettering.
In the present case, the word part of applicant’s mark is LEMON and registrant’s mark is LEMON. The word portion of the 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. Id.
Therefore, the marks are confusingly similar.
Similarity of the Goods
The goods 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 applied-for goods and services are “Audiovisual teaching apparatus; children's educational software; computer software, recorded; computer programmes for interactive television and for interactive games and/or quizzes; games software; cell phones; downloadable software; downloadable interactive entertainment software for playing computer games; interactive multimedia software for playing games; software; software for interactive television; software programs for video games; software and applications for mobile devices; games software; education software” in International Class 9.
The registrant’s goods are “Speakers, namely audio speakers; loudspeakers; wireless speakers; headphones; headsets; wireless headsets; earphones; earbuds; batteries; electrical power distribution units; photovoltaic cells, modules and inverters; audio cable connectors; apparatus for recording, transmission, reproduction of sound or music; portable digital electronic devices, namely audio speakers for recording, transmission or reproduction of sounds and music; electronic docking stations for digital music players; straps specially adapted for audio and loud speakers; cabinets for loudspeakers; protective cases for speakers; accessories for speakers, namely, batteries, wireless adapters, adapter rings for attaching objects to speakers, remote controls, microphones, secure digital memory (SD)cards, straps; digital music downloadable provided from the internet; musical instrument amplifiers; musical instrument connectors; portable music players; digital music players; downloadable music files; digital music downloadable from the Internet; computer software for processing digital music files; computer application software for broadcasting sound and music; computer software for creating, managing, updating and using music database; computer software for providing broadcasting sound and music; computer software for downloading sound and music” in International Class 9.
In this case, the application uses broad wording to describe “software”, “computer software, record”, “software and applications for mobile devices”, and “downloadable software”, which presumably encompasses all goods of the type described, including registrant’s more narrow “computer application software for broadcasting sound and music; computer software for creating, managing, updating and using music database; computer software for providing broadcasting sound and music; computer software for downloading sound and music”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Furthermore, the attached sampling of Internet evidence, consisting of webpages from PlayStation, Samsung, and SmartMusic, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. 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).
Based on the foregoing, registration for the applied-for mark is refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF GOODS AND SERVICES
International Class 9
The wording “audiovisual teaching apparatus” in the identification of goods is indefinite and must be clarified because it does not specify what the apparatus is. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
International Class 41
International Class 42
Miscellaneous Advisories
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Suggested Amendment
Applicant may amend to adopt the following suggested wording, if acceptable (changes in bold, comments in bold italic):
Class 9: Audiovisual teaching apparatus, namely, tablet computers; recorded children's educational software; computer software, recorded,
for {specify the function or purpose of the program, e.g. “mobile learning, sharing videos, audio, documents, conducting collaborative work”}; recorded
computer programmes for accessing interactive television and for interactive games and quizzes; recorded games software; cell phones; downloadable software
for {specify the purpose and function of the software, e.g. “mobile learning, conducting collaborative work, sharing videos, audio, and documents”};
downloadable interactive entertainment software for playing computer games; downloadable interactive multimedia software for playing games; software; downloadable software for interactive television; downloadable computer software programs for video games; recorded computer application
software for mobile devices, namely, software for {specify the purpose, e.g. “use in collaborative work, mobile learning, sharing videos, audio and
documents”}; downloadable education software featuring instruction in {specify subject matter, e.g. “mathematics,
economics”}
Class 41: Educational
instruction in the form of classes and seminars in the field of {specify the field, e.g. “computer science, mathematics”}; educational services, namely, conducting classes, seminars, conferences and workshops in the field of {specify the field, e.g. “computer science, mathematics”} provided by institutes
of further education; provision of non-downloadable games on the Internet; career counselling and coaching, namely, providing advice concerning education options to pursue career
opportunities; educational services, namely, conducting classes in the field of occupationally orientated instruction; presentation of live show performances; providing facilities for educational purposes to {specify who the facilities are provided to, e.g. “children,
developmentally disabled individuals”}; electronic game services provided by means of the Internet; provision of training courses in the field of {specify
group, e.g. “computer science, mathematics, career advancement”}; organizing community cultural activities; arranging and conducting of meetings in the field of
education; organising of educational games being quiz competitions; organisation of quizzes, games and quiz competitions; organisation of games and
sports competitions; arranging of competitions for educational purposes; production of films for educational purposes; live entertainment production services; educational
testing; entertainment services, namely, production and distribution of quizzes; arranging and conducting of interactive treasure hunt games; providing
online computer games; hire rental of teaching materials; digital video, audio and multimedia entertainment publishing services
Class 42: Computer software design and updating;
updating of software databases; advisory services in the field of product development and quality improvement of software; computer software design; development of interactive multimedia computer software; software development; software development, programming and implementation; design and development of computer game software; design of video
games for others; creation, maintenance and adaptation of software; web site hosting services; and software as a service
(SAAS) services, namely, hosting software for use by others for use {specify the purpose or function, e.g. “conducting collaborative learning sessions, virtual
learning classes, sharing documents”}; rental of computer software; programming of educational computer software for
others
Amendment Guidelines
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.
The following description is suggested, if accurate: The mark consists of a shaded square with curved edges on the top left and bottom right of the square. Inside the square is a pattern created by six dots. To the right of the square is the wording “LEMON” in stylized lettering.
ENTITY OMITTED
Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c).
If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
RESPONSE GUIDANCE