UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 6/9/2014

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.

SUMMARY OF ISSUES:

• Section 2(d) Refusal—Likelihood of Confusion
• Identification of Services Requirement
• Multiple-Class Application Requirements Advisory

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3513556, 3513557, 3575428, and 4151167.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

Applicant has applied to register HELIUM for use in connection with “Connectivity services enabling device-to-device, device-to-Internet, device-to-group, and Internet-to-device connectivity through radio, Internet, and wireless connections” in Class 42. 

The mark in Registration No. 3513556 is HEALIUM for “Media services in the nature of electronic narrowcast transmission of entertainment media content; audio-visual and television program narrowcasting” in Class 38.

The mark in Registration No. 3513557 is HEALIUM NETWORK for “Media services in the nature of electronic narrowcast transmission of entertainment media content; audio-visual and television program narrowcasting” in Class 38.

The mark in Registration No. 3575428 is HELIUM for various computer software, including, “Computer software that provides web-based access to applications and services through a web operating system or portal interface” in Class 09.

The mark in Registration No. 4151167 is HELIUM CONTENT SOURCE for various software as a service services, including “Software as a service services featuring on-line non-downloadable software for typing, recording, organizing, editing and transmitting audio and visual information and images” in Class 42.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

Similarity of the Marks

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).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

REGISTRATION NO. 3513556 –HEALIUM

In this case, applicant’s mark HELIUM is confusingly similar to the mark HEALIUM in Registration No. 3513556.  Specifically, purchasers are likely to pronounce the marks in the same way.  The attached dictionary entry shows that applicant’s mark HELIUM is pronounced like “ˈhiliəm”.  See http://www.collinsdictionary.com/dictionary/american/helium.  The attached dictionary entry shows that HEAL is pronounced like “hil”.  See http://www.collinsdictionary.com/dictionary/american/heal.  Therefore, despite the difference in the spelling, purchasers are likely to pronounce both marks as “ˈhiliəm”.  The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).  Because purchasers will call for applicant’s and registrant’s services with the same term, purchasers are likely to mistakenly believe that the marks identify the same source of services.  Thus, the marks are confusingly similar

REGISTRATION NO. 3513557—HEALIUM NETWORK

In this case, applicant’s mark HELIUM is confusingly similar to the mark HEALIUM NETWORK in Registration No. 3513557.  As explained above, purchasers are likely to pronounce the initial term HEALIUM in the registrant’s mark in the same way as the applicant’s mark.  Notably, the registrant’s mark also includes the term NETWORK; however, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for an applicant’s services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752 ; TMEP §1207.01(b)(viii), (c)(ii).  In this case, the registrant has disclaimed the term NETWORK, thereby acknowledging the term’s descriptiveness.  Accordingly, it is likely that when purchasers encounter registrant’s mark, they will understand the term NETWORK as describing its telecommunication services and thus focus on the distinctive term HEALIUM to identify the source of those services.  Because purchasers are likely to pronounce the dominant, source-indicating portion of registrant’s mark in the same way as the entirety of applicant’s mark, purchasers are likely to believe both marks identify the same source of services.  Thus, the marks are confusingly similar.

REGISTRATION NO. 3575428—HELIUM

In this case, applicant’s mark is HELIUM and registrant’s mark is HELIUM.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and services.  Both convey a meaning of a colorless, odorless inert gaseous element occurring in natural gas and with radioactive ores.  See http://education.yahoo.com/reference/dictionary/entry/helium.  Therefore, the marks are confusingly similar. 

REGISTRATION NO. 4151167—HELIUM CONTENT SOURCE

In this case, applicant’s mark HELIUM is confusingly similar to the mark HELIUM CONTENT SOURCE in Registration No. 4151167.  Specifically, the term HELIUM in the registrant’s mark is identical in sound, appearance, and meaning to the entirety of the applicant’s mark.  Notably, the registrant’s mark also includes the term CONTENT SOURCE; however, this term has been disclaimed.  Accordingly, it is likely that purchasers will understand the term CONTENT SOURCE as merely describing registrant’s services and thus focus on the distinctive term HELIUM to identify the source of the services.  Because the dominant portion of registrant’s mark is identical to the entirety of applicant’s mark, purchasers are likely to believe—mistakenly—that the marks identify the same source of services.  Thus, the marks are confusingly similar.

Relatedness of the Goods and Services

The goods and 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 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 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

In this case, applicant has identified “connectivity services enabling device-to-device, device-to-Internet, device-to-group, and Internet-to-device connectivity through radio, Internet, and wireless connections” in Class 42.  As more fully explained in the Identification of Services Requirement, the underlying nature of applicant’s services is unclear.  For example, the attached definition entry defines “connectivity” as “the ability to make and maintain a connection between two or more points in a telecommunication system.”  See http://education.yahoo.com/reference/dictionary/entry/connectivity.  Therefore, it appears that applicant may provide a telecommunication service properly classified in Class 38.  If this is the case, the applicant’s services are related to the “media services in the nature of electronic narrowcast transmission of entertainment media content; audio-visual and television program narrowcasting” services identified in Registration Nos. 3513557 and 3513556.  The term “narrowcast” is defined as “to transmit, as by cable, programs confined to the interests of a specific group of viewers, subscribers, or listeners”. See http://education.yahoo.com/reference/dictionary/entry/narrowcast.  Therefore, applicant’s identification of “connectivity services” is broad enough to encompass all connection services, including those confined to the interests of a specific group.  Unrestricted and broad identifications are presumed to encompass all services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).  Thus, the applicant’s services are presumed to encompass the registrant’s services.  Accordingly, the services are related.

In contrast, an alternate dictionary entry defines “connectivity” as the “capacity for the interconnection of platforms, systems, and applications”.  See http://www.oxforddictionaries.com/us/definition/american_english/connectivity.  This suggests that applicant provides a technological service that enables users to connect.  If this is the case, applicant’s services are related to the “computer software that provides web-based access to applications and services through a web operating system or portal interface” in Registration No. 3575428 and the “software as a service services featuring on-line non-downloadable software for typing, recording, organizing, editing and transmitting audio and visual information and images” in Registration No. 4151167.  Specifically, the applicant’s technological services are broad enough to encompass the provision of software that transmits information and images or provides access to applications.  Thus, the goods and services are related.       

Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).

In summary, the marks are confusingly similar and the goods and services are related.  Therefore, purchasers are likely to be confused as to the source of the goods and services.  Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

IDENTIFICATION OF SERVICES REQUIREMENT

Applicant has identified the following services:

“Connectivity services enabling device-to-device, device-to-Internet, device-to-group, and Internet-to-device connectivity through radio, Internet, and wireless connections” in Class 42

As noted in the Section 2(d) refusal above, the identification of services is indefinite because it is too broad and could include services classified in other international classes. See TMEP §§1402.01, 1402.03.  For example, “providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works” or “wireless electronic transmission of data” are telecommunication services in Class 38, but “providing an on-line network environment that features technology that enables users to share data” is a technological service in Class 42.  Therefore, applicant must clarify the nature of the services and classify the services accordingly.

To summarize, applicant may adopt the following identification of services, if accurate:

“Connectivity services, namely, [specify service in Class 38, e.g. “providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works”] from device-to-device, device-to-Internet, device-to-group, and Internet-to-device via radio, Internet, and wireless connections” in Class 38

“Connectivity services, namely, [specify service in Class 42, e.g. “providing an on-line network environment that features technology that enables users to share data”] device-to-device, device-to-Internet, device-to-group, and Internet-to-device via radio, Internet, and wireless connections” in Class 42

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

The application identifies services that may be in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies services that may be classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address each refusal and requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and requirement in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

/Elizabeth F. Jackson/

Elizabeth F. Jackson

Trademark Examining Attorney

Law Office 113

(571) 272-6396

Elizabeth.Jackson@uspto.gov

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.

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/9/2014 FOR U.S. APPLICATION SERIAL NO. 86205395

Please follow the instructions below:

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/9/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

WARNING

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.