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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/17/2017

 

INTRODUCTION

 

In a previous Office action dated May 24, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  Applicant was also required to amend the mark description.  In addition, applicant was advised that a mark in a prior-filed application may present a bar to registration of the applied-for mark.

 

The mark in the prior-filed application has registered and applicant must now respond timely and completely to the new issue below.  See 15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.

 

 

SUMMARY OF ISSUES that applicant must address:

 

·        SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – New Issue

·        SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – Continued & Maintained

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – New Issue

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5143578.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is LIME in standard characters for “Computer hardware and software for regulating, controlling, measuring, tracking and reducing energy use; security and fire alarms; smoke alarms; carbon monoxide alarms; computer hardware and software system and electronic devices for remotely monitoring environmental conditions and for controlling devices within a building, facility, grounds, or designated spatial area; environmental monitoring system comprising meters and sensors that measure environmental conditions and that activate alarm and reporting functions; climate control systems consisting of digital thermostats, air conditioning, heating, ventilation, humidity and drying control devices; thermostats; electric sensors; lighting control apparatus; electronic video surveillance products, namely, electronic components of security systems.”

 

The cited registration (Reg. No. 5143578) is LIME in standard characters for “Motion recognizing sensors in the nature of motion detectors; Gyro sensors using GPS functions for measuring movement; Motion detectors; Invader detecting sensors in the nature of alarm sensors; Privacy protection sensors in the nature of alarm sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range sensor in the nature of proximity sensors; Electronic controllers for sensors; Pressure sensors; Sensors for measuring motion or movement of instruments, not for medical use; Window opening and closing detecting sensors in the nature of motion detectors; Digital sensory devices, namely, motion detectors; Object detecting sensors in the nature of motion detectors; Door opening and closing detecting sensors in the nature of motion detectors; Remote control apparatus for radios, televisions, stereos, air conditioning devices and media players; Multi-function touch buttons in the nature of remote control apparatus; Sensor station in the nature of a motion detector control panel; Audio speakers; Computer monitors; Digital door locks; TV remote controls; Remote controls for controlling electronic products, namely, radios, televisions, stereos, air conditioning devices and media players; Digital audio interface apparatus, namely, audio-receivers, radios, stereos and media players; Wireless audio and video receivers; Battery charge devices; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines and equipment; Computer software for the remote control of electric lighting apparatus; Computer application software for the remote control of consumer electronic apparatus; Computer software for the remote control of consumer electronic apparatus; Computer programs for the remote control of consumer electronic apparatus, which are installed for consumer electronic apparatus; Computer software for the remote control of vacuum cleaner; wireless headsets for smartphones; Wireless cellular phone headsets; Headsets for use with computers; Wireless headsets for mobile phones; Wireless headsets for smartphones; Leather case for mobile phones; Leather case for smart phones; Flip covers for mobile phones; Flip covers for smart phones; Tablet PC; Monitors for commercial use; Wearable computers; Computers; Light emitting diodes (LED) display; Leather cases adapted for tablet computers; Protective flip covers for tablet computers; Portable computers; Chargeable batteries; Battery compensation chargers; 3D spectacles; Digital cameras; Network monitoring cameras; Television receivers; Display for television receivers, namely, televisions; Audio components system comprising surround sound speakers, loud speakers, stereo tuners, sound mixers, sound equalizers, audio recorders, and radios; Apparatus for the recording, transmission, or reproduction of sound and images; Earphones; DVD players; Handheld media players; Oscillation sensor devices; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air quality measuring apparatus, namely, particle counters; Dust measuring apparatus, namely, particle counters; Weight scales not for medical purposes; Measuring apparatus not for medical purposes, namely, digitizers and air cleaners; Light switches; Electric power distribution units; Apparatus for improving power efficiency, namely, testing and measuring equipment for testing efficiency of power plant equipment; Apparatus for diagnosing electrical power installations, namely, testing equipment for use in testing the performance and efficiency of power plant equipment; Apparatus for measuring, monitoring, and analyzing electricity consumption, namely, electric sensors; Electric wire and cable; Digital audio and video recorders and players; Speaker systems comprising audio amplifiers, audio speakers and stereos; Electric audio and visual apparatus and instruments, namely, media players, televisions, and tablet computers; Handheld multimedia players; Remote control for air conditioning devices; Remote control apparatus for controlling lighting; Electric plugs; Electric connectors, namely, sockets and plugs; Solar cell wafer; Modules for photovoltaic power generation; Solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels for production of electricity; Solar power panel for electricity generation; Solar panels for electricity generation; Solar panels for the production of electricity; Inverter used in solar power generation; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer operating system software.”

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); 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 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).

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  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.

 

Comparison of the Marks

 

Turning to the first prong of the test, a comparison must be made between applicant’s applied-for mark LIME in standard characters and Reg. No. 5143578 for the mark LIME in standard characters.

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  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). 

 

In the present case, applicant’s mark is LIME and registrant’s mark is LIME.  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).  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. 

 

Comparison of the Goods

 

The goods 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 need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).

 

Applicant’s identified services are “Computer hardware and software for regulating, controlling, measuring, tracking and reducing energy use; security and fire alarms; smoke alarms; carbon monoxide alarms; computer hardware and software system and electronic devices for remotely monitoring environmental conditions and for controlling devices within a building, facility, grounds, or designated spatial area; environmental monitoring system comprising meters and sensors that measure environmental conditions and that activate alarm and reporting functions; climate control systems consisting of digital thermostats, air conditioning, heating, ventilation, humidity and drying control devices; thermostats; electric sensors; lighting control apparatus; electronic video surveillance products, namely, electronic components of security systems.”

 

Reg. No. 5143578’s identified goods are “Motion recognizing sensors in the nature of motion detectors; Gyro sensors using GPS functions for measuring movement; Motion detectors; Invader detecting sensors in the nature of alarm sensors; Privacy protection sensors in the nature of alarm sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range sensor in the nature of proximity sensors; Electronic controllers for sensors; Pressure sensors; Sensors for measuring motion or movement of instruments, not for medical use; Window opening and closing detecting sensors in the nature of motion detectors; Digital sensory devices, namely, motion detectors; Object detecting sensors in the nature of motion detectors; Door opening and closing detecting sensors in the nature of motion detectors; Remote control apparatus for radios, televisions, stereos, air conditioning devices and media players; Multi-function touch buttons in the nature of remote control apparatus; Sensor station in the nature of a motion detector control panel; Audio speakers; Computer monitors; Digital door locks; TV remote controls; Remote controls for controlling electronic products, namely, radios, televisions, stereos, air conditioning devices and media players; Digital audio interface apparatus, namely, audio-receivers, radios, stereos and media players; Wireless audio and video receivers; Battery charge devices; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines and equipment; Computer software for the remote control of electric lighting apparatus; Computer application software for the remote control of consumer electronic apparatus; Computer software for the remote control of consumer electronic apparatus; Computer programs for the remote control of consumer electronic apparatus, which are installed for consumer electronic apparatus; Computer software for the remote control of vacuum cleaner; wireless headsets for smartphones; Wireless cellular phone headsets; Headsets for use with computers; Wireless headsets for mobile phones; Wireless headsets for smartphones; Leather case for mobile phones; Leather case for smart phones; Flip covers for mobile phones; Flip covers for smart phones; Tablet PC; Monitors for commercial use; Wearable computers; Computers; Light emitting diodes (LED) display; Leather cases adapted for tablet computers; Protective flip covers for tablet computers; Portable computers; Chargeable batteries; Battery compensation chargers; 3D spectacles; Digital cameras; Network monitoring cameras; Television receivers; Display for television receivers, namely, televisions; Audio components system comprising surround sound speakers, loud speakers, stereo tuners, sound mixers, sound equalizers, audio recorders, and radios; Apparatus for the recording, transmission, or reproduction of sound and images; Earphones; DVD players; Handheld media players; Oscillation sensor devices; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air quality measuring apparatus, namely, particle counters; Dust measuring apparatus, namely, particle counters; Weight scales not for medical purposes; Measuring apparatus not for medical purposes, namely, digitizers and air cleaners; Light switches; Electric power distribution units; Apparatus for improving power efficiency, namely, testing and measuring equipment for testing efficiency of power plant equipment; Apparatus for diagnosing electrical power installations, namely, testing equipment for use in testing the performance and efficiency of power plant equipment; Apparatus for measuring, monitoring, and analyzing electricity consumption, namely, electric sensors; Electric wire and cable; Digital audio and video recorders and players; Speaker systems comprising audio amplifiers, audio speakers and stereos; Electric audio and visual apparatus and instruments, namely, media players, televisions, and tablet computers; Handheld multimedia players; Remote control for air conditioning devices; Remote control apparatus for controlling lighting; Electric plugs; Electric connectors, namely, sockets and plugs; Solar cell wafer; Modules for photovoltaic power generation; Solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels for production of electricity; Solar power panel for electricity generation; Solar panels for electricity generation; Solar panels for the production of electricity; Inverter used in solar power generation; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer operating system software.”

 

Applicant and registrant provide overlapping goods and several identical goods.  With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods 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)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

In this case, the identifications set forth in the application and registration have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the registration uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in applicant’s more narrow identification.  For example, applicant and registrant both provide alarms, sensors, energy use management devices, and software for remotely monitoring environmental conditions.

 

Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the goods and services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).

 

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

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – Continued & Maintained

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4833962 and 4833960.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is “LIME” in standard character form for “Computer hardware and software for regulating, controlling, measuring, tracking and reducing energy use; security and fire alarms; smoke alarms; carbon monoxide alarms; computer hardware and software system and electronic devices for remotely monitoring environmental conditions and for controlling devices within a building, facility, grounds, or designated spatial area; environmental monitoring system comprising meters and sensors that measure environmental conditions and that activate alarm and reporting functions; climate control systems consisting of digital thermostats, air conditioning, heating, ventilation, humidity and drying control devices; thermostats; electric sensors; lighting control apparatus; electronic video surveillance products, namely, electronic components of security systems.”

 

The cited registration (Reg. No. 4833960) is “LIME” in standard character form for “telecommunication services, namely, providing local and long-distance transmission of voice, data and graphics by means of telephone, telegraphic, cable, satellite and Internet transmissions, and providing fibre optic network services; Communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; Voice over Internet Protocol (VoIP) services; telecommunications network service, namely, providing telecommunications connections and access to a global computer network; providing telecommunication connections to a global computer network, to the Internet and to databases thereon; providing multiple user access to the Internet and to a global computer network; electronic transmission of information, computer programs, and data by computer terminals, telephone, and television and video broadcasting; providing telecommunication access services to a computer network or to the Internet; providing access to digital music websites on the Internet; transmission of digital music, images, voice and data by telecommunications, namely, telephone, telegraphic, cable, satellite and Internet transmission; electronic transmission of voice, data and information; VoIP, local, long distance, international and toll free telephone services; automated voice response services; call routing services; frame relay services; ATM (asynchronous transfer mode) services; ISDN (integrated services digital network) services; electronic messaging and mail services; leasing and rental services in connection with communications apparatus and equipment; electronic transmission of recorded sound and images; providing telephone conferencing, video conferencing, and web conferencing services; providing telecommunications access to electronic data, databases, bulletin boards and publications on remote computers or via computer networks. transmission of written and digital communication of mathematical and statistical data. providing on-line chat rooms for transmission of messages among computer users concerning topics of general interest; advisory, information, consultancy services relating to the aforementioned services; technical project studies, namely, consultation in the field of telecommunications.”

 

The cited registration (Reg. No. 4833962) is “LIME LANDLINE INTERNET MOBILE ENTERTAINMENT” in stylized text for “telecommunication services, namely, providing local and long-distance transmission of voice, data and graphics by means of telephone, telegraphic, cable, satellite and Internet transmissions, and providing fibre optic network services; Communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; Voice over Internet Protocol (VoIP) services; telecommunications network service, namely, providing telecommunications connections and access to a global computer network; providing telecommunication connections to a global computer network, to the Internet and to databases thereon; providing multiple user access to the Internet and to a global computer network; electronic transmission of information, computer programs, and data by computer terminals, telephone, and television and video broadcasting; providing telecommunication access services to a computer network or to the Internet; providing access to digital music websites on the Internet; transmission of digital music, images, voice and data by telecommunications, namely, telephone, telegraphic, cable, satellite and Internet transmission; electronic transmission of voice, data and information; VoIP, local, long distance, international and toll free telephone services; automated voice response services; call routing services; frame relay services; ATM (asynchronous transfer mode) services; ISDN (integrated services digital network) services; electronic messaging and mail services; leasing and rental services in connection with communications apparatus and equipment; electronic transmission of recorded sound and images; providing telephone conferencing, video conferencing, and web conferencing services; providing telecommunications access to electronic data, databases, bulletin boards and publications on remote computers or via computer networks, transmission of written and digital communication of mathematical and statistical data. providing on-line chat rooms for transmission of messages among computer users concerning topics of general interest; advisory, information, consultancy services relating to the aforementioned services; technical project studies, namely, consultation in the field of telecommunications.”

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and 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 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).

 

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.

 

Comparison of the Marks

 

Turning to the first prong of the test, a comparison must be made between applicant’s applied-for mark “LIME” in standard character form, and Reg. No. 4833960 for the mark “LIME” in standard character form, and Reg. No. 4833962 for the mark “LIME LANDLINE INTERNET MOBILE ENTERTAINMENT” in stylized text.

 

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

Turning first to Reg. No. 4833960, applicant’s mark is LIME and registrant’s mark is LIME.  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).  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 services.  In re i.am.symbolic, Llc, 116 USPQ2d at 1411.

 

Therefore, the marks are confusingly similar. 

 

Turning next to Reg. No. 4833962, 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 a party’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).

 

Registrant’s mark is composed of the word “LIME” in large font, with “LANDLINE INTERNET MOBILE ENTERTAINMENT” in small print at the bottom.  This bottom portion is disclaimed from registrant’s mark as descriptive.  Because “LIME” is the stronger word in the mark that is also displayed most prominently, “LIME” is the dominant portion of registrant’s mark.  Applicant’s mark and the dominant portion of registrant’s mark are identical, and therefore confusingly similar.

 

Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods and services despite minor differences in the marks.

 

Comparison 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 goods and respective 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).

 

Applicant’s identified goods are “Computer hardware and software for regulating, controlling, measuring, tracking and reducing energy use; security and fire alarms; smoke alarms; carbon monoxide alarms; computer hardware and software system and electronic devices for remotely monitoring environmental conditions and for controlling devices within a building, facility, grounds, or designated spatial area; environmental monitoring system comprising meters and sensors that measure environmental conditions and that activate alarm and reporting functions; climate control systems consisting of digital thermostats, air conditioning, heating, ventilation, humidity and drying control devices; thermostats; electric sensors; lighting control apparatus; electronic video surveillance products, namely, electronic components of security systems.”

 

Reg. No. 4833960’s identified services are “telecommunication services, namely, providing local and long-distance transmission of voice, data and graphics by means of telephone, telegraphic, cable, satellite and Internet transmissions, and providing fibre optic network services; Communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; Voice over Internet Protocol (VoIP) services; telecommunications network service, namely, providing telecommunications connections and access to a global computer network; providing telecommunication connections to a global computer network, to the Internet and to databases thereon; providing multiple user access to the Internet and to a global computer network; electronic transmission of information, computer programs, and data by computer terminals, telephone, and television and video broadcasting; providing telecommunication access services to a computer network or to the Internet; providing access to digital music websites on the Internet; transmission of digital music, images, voice and data by telecommunications, namely, telephone, telegraphic, cable, satellite and Internet transmission; electronic transmission of voice, data and information; VoIP, local, long distance, international and toll free telephone services; automated voice response services; call routing services; frame relay services; ATM (asynchronous transfer mode) services; ISDN (integrated services digital network) services; electronic messaging and mail services; leasing and rental services in connection with communications apparatus and equipment; electronic transmission of recorded sound and images; providing telephone conferencing, video conferencing, and web conferencing services; providing telecommunications access to electronic data, databases, bulletin boards and publications on remote computers or via computer networks, transmission of written and digital communication of mathematical and statistical data. providing on-line chat rooms for transmission of messages among computer users concerning topics of general interest; advisory, information, consultancy services relating to the aforementioned services; technical project studies, namely, consultation in the field of telecommunications.”

 

Reg. No. 4833962’s identified services are “telecommunication services, namely, providing local and long-distance transmission of voice, data and graphics by means of telephone, telegraphic, cable, satellite and Internet transmissions, and providing fibre optic network services; Communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; Voice over Internet Protocol (VoIP) services; telecommunications network service, namely, providing telecommunications connections and access to a global computer network; providing telecommunication connections to a global computer network, to the Internet and to databases thereon; providing multiple user access to the Internet and to a global computer network; electronic transmission of information, computer programs, and data by computer terminals, telephone, and television and video broadcasting; providing telecommunication access services to a computer network or to the Internet; providing access to digital music websites on the Internet; transmission of digital music, images, voice and data by telecommunications, namely, telephone, telegraphic, cable, satellite and Internet transmission; electronic transmission of voice, data and information; VoIP, local, long distance, international and toll free telephone services; automated voice response services; call routing services; frame relay services; ATM (asynchronous transfer mode) services; ISDN (integrated services digital network) services; electronic messaging and mail services; leasing and rental services in connection with communications apparatus and equipment; electronic transmission of recorded sound and images; providing telephone conferencing, video conferencing, and web conferencing services; providing telecommunications access to electronic data, databases, bulletin boards and publications on remote computers or via computer networks, transmission of written and digital communication of mathematical and statistical data. providing on-line chat rooms for transmission of messages among computer users concerning topics of general interest; advisory, information, consultancy services relating to the aforementioned services; technical project studies, namely, consultation in the field of telecommunications.”

 

Telecommunications providers, like the registrant, commonly provide security alarm systems and digital thermostats or devices that remotely monitor and adjust environmental conditions.  The Internet evidence attached in the May 24, 2016 Office Action consists of websites from telecommunications providers that also provide security system services and environmental controls.  This evidence establishes that the same entity commonly provides the relevant services and markets them under the same mark.  Therefore, applicant’s and registrant’s services 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).

 

• Blue Ridge
• • Security, Telecom & Equipment: http://www.brctv.com/smart-home/packages; http://blueridgesecuritysolutions.com/monitor/residential-burglary-alarms/
• Century Link
• • Security, Telecom & Equipment: http://www.centurylink.com/home/smarthome/; http://www.centurylink.com/home/smarthome/#equipment
• MediaCom
• • Security, Telecom & Equipment: http://mediacomcable.com/products/home-security
• HTC
• • Security, Telecom & Equipment: http://www.htcinc.net/bundle-and-save; http://www.htcinc.net/security/additional-equipment/
• Suddenlink
• • Security, Telecom & Equipment: http://www.suddenlink.com/home-security-0; http://www.homesecuritysystems.net/suddenlink-review/

• AT&T
• • Security: http://my-digitallife.att.com/learn/home-security-and-automation
  • Telecom: http://www.att.com/gen/general?pid=18235#fbid=R3rKSV5GNrE
  • Thermostat: http://my-digitallife.att.com/support/home-automation-and-devices/thermostat.html
• XFINITY
• • Security: http://www.xfinity.com/home-security.html
  • Telecom: http://www.xfinity.com/Corporate/shop/productoverview.html
  • Thermostat: http://www.xfinity.com/home-security/devices/thermostats.html
•  Time Warner
• • Security, Digital Thermostat & Temperature Controls: http://www.timewarnercable.com/en/intelligenthome/overview.html
  • Telecom: http://www.timewarnercable.com/en/plans-packages/internet/internet-service-plans.html
• Cox
• • Security: http://www.cox.com/residential/homelife.html
  • Telecom: http://www.cox.com/residential/home.html
  • Thermostat: http://www.cox.com/residential/support/home-security/article.cox?articleId=ce506660-f765-11e3-d49d-000000000000

 

Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the goods and services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).

 

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

 

 

RESPONSE GUIDELINES

 

For this application to proceed further, applicant must explicitly address each refusal and/or 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 specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

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 and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) 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.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Mildred Black/

Examining Attorney

Law Office 121

571.270.1217

mildred.black@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 7/17/2017 FOR U.S. APPLICATION SERIAL NO. 86895004

 

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 7/17/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.