To: | Laird Technologies, Inc. (JWGrp@hdp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87239254 - STERLING - 9062L-200029 |
Sent: | 2/23/2017 8:45:42 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87239254
MARK: STERLING
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Laird Technologies, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/23/2017
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.
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Likelihood of confusion refusal
n Advisory concerning earlier filed, potentially conflicting applications
n Amend identification of goods
LIKELIHOOD OF CONFUSION REFUSAL
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re 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 and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
The Marks at Issue
The applicant seeks to register STERLING for Bluetooth modules (intercommunication apparatus); and intercommunication apparatus.
The registered marks, all owned by the same entity, are:
U.S. Registration No. 5023499 STERLING and design for: Microphones, microphone cartridges, microphone stands, cases for microphones and audio systems, microphone windscreens, pop filters, speaker microphones, speaker microphone cartridges, microphone cables and cordsets, audio cables, power cables, microphone transformers, audio mixers, preamplifiers, power amplifiers, audio amplifiers, wireless audio receivers, wireless audio transmitters, antennas; antenna distribution systems, namely, amplifiers, combiners, and splitters, antenna cables and antenna splitters; rack mounting kits, comprising, connectors and cables, microphone goosenecks, microphone anti-roll devices, audio connectors brackets, fasteners, trays, spacers and panels; wireless audio systems, namely, microphones, receivers, transmitters, power supplies, cables and antennas, audio equalizers, audio processors, audio feedback reducers and power supplies; hard wired and wireless audio monitor systems, namely, transmitters, receivers, earpieces, headphones, speakers, microphone grills, microphone mounts and adapters, microphone switches, mounts for attaching microphones or audio equipment to a user; audio equipment, namely, stereo speakers, woofers, sub-woofers, tweeters and amplifiers; studio monitors, headphones and microphone accessories.
U.S. Registration No. 3535461 STERLING AUDIO and design (with AUDIO disclaimed) for: Microphones, microphone cartridges, microphone stands, cases for microphones and audio systems, microphone windscreens, pop filters, speaker microphones, speaker microphone cartridges, microphone cables and cordsets, audio cables, power cables, microphone transformers, audio mixers, preamplifiers, power amplifiers, audio amplifiers, wireless audio receivers, wireless audio transmitters, antennas, antenna distribution systems, namely, amplifiers, combiners and splitters; antenna cables, antenna splitters, rack mounting kits, namely, brackets, fasteners, trays, spacers, panels, connectors and cables; microphone goosenecks, microphone anti-roll devices, audio connectors, wireless audio systems, namely, microphones, receivers, transmitters, power supplies, cables and antennas; audio equalizers, audio processors audio feedback reducers, power supplies, hard wired and wireless audio monitor systems, namely, transmitters, receivers, earpieces, headphones, speakers; microphone grills, microphone mounts and adapters, microphone switches, mounts for attaching microphones or audio equipment to a user, audio equipment, namely, stereo speakers, woofers, sub-woofers, tweeters and amplifiers
U.S. Registration No. 3568607 STERLING AUDIO (with AUDIO disclaimed) for: Microphones, microphone cartridges, microphone stands, cases for microphones and audio systems, microphone windscreens, pop filters, speaker microphones, speaker microphone cartridges, microphone cables and cordsets, audio cables, power cables, microphone transformers, audio mixers, preamplifiers, power amplifiers, audio amplifiers, wireless audio receivers, wireless audio transmitters, antennas, antenna distribution systems, namely, amplifiers, combiners and splitters; antenna cables, antenna splitters, rack mounting kits, namely, brackets, fasteners, trays, spacers, panels, connectors and cables; microphone goosenecks, microphone anti-roll devices, audio connectors, wireless audio systems, namely, microphones, receivers, transmitters, power supplies, cables and antennas; audio equalizers, audio processors, audio feedback reducers, power supplies, hard wired and wireless audio monitor systems, namely, transmitters, receivers, earpieces, headphones, speakers; microphone grills, microphone mounts and adapters, microphone switches, mounts for attaching microphones or audio equipment to a user, audio equipment, namely, stereo speakers, woofers, sub-woofers, tweeters and amplifiers
The Marks are Highly Similar
The design element in two of the registered marks does not alter the finding that the marks are confusingly similar. For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
The Goods are Closely Related
The applicant’s goods are overly broad, and could encompass the goods of the registrant. With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services 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 and/or services 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 and/or 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).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identifications.
The examining attorney has attached sample websites that show audio apparatus of the type in the registrant’s registrations, and audio modules for use therewith, that employ BLUETOOTH technology.
Therefore, registration is refused under Section 2(d) of the Trademark Act.
Advisory Concerning 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.
GOODS
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1.
Applicant may replace BLUETOOTH with the following, if appropriate: “Blue violet laser technology.”
Applicant may substitute the following wording, if accurate. Suggested changes are in bold and items the applicant must clarify are in italics.
Class 9: Blue violet laser technology (state type of modules, e.g., memory modules, microphone modules, integrated circuit modules, etc.); intercommunication apparatus, namely, (list each item, e.g., telephones incorporating intercommunication systems)
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.
See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110.
Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp. The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@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.