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: 3/7/2018

THIS IS A FINAL ACTION.

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.  

This Office action is in response to applicant’s communication filed on 1/17/18.  The examining attorney has determined as follows:

• For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3736572 and 2018236.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  Please see below for details.

• The trademark examining attorney notes that the following requirement(s) have been satisfied:  the requirement that applicant amend the identification of goods. 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—CONTINUED AND MADE FINAL

In the 7/18/17 Office action, registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3736572 and 2018236.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registrations attached to the 7/18/17 Office action.  The applicant has amended the identification and submitted arguments in response to the refusal which, in the opinion of the examining attorney, do not obviate the likelihood of confusion.  Therefore, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.

The applicant has applied to register AEON in standard character format for, as amended “stereo headphones.”  The registered marks are:

• EON in standard character format for “audio equipment, namely, amplifiers and loudspeakers” (Reg. No. 3736572)
• EON in typed form for “loud speakers and consoles, namely, audio mixers in housing units provided with external control panels” (Reg. No. 2018236)

The cited registrations are owned by the same entity, i.e., Harman International Industries.      

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01. 

Comparison 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 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).

In the present case, the marks, although spelled slightly differently, 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).  The differences in spelling are de minimis and do not obviate the likelihood of confusion. 

Furthermore, the commercial impressions conveyed by the applicant’s mark and the cited marks are the same:  “aeon” is a variant of “eon” (please see the pertinent definition, downloaded on 7/17/17 from The American Heritage Dictionary of the English Language and attached to the 7/18/17 Office action).  “Eon” or “aeon” is defined as “An indefinitely long period of time; an age”, and “The longest division of geologic time, containing two or more eras.”  Please see the attached definition, downloaded on 3/6/18 from The American Heritage Dictionary of the English Language. The foregoing equivalence heightens the likelihood of confusion between the marks. 

Comparison Of The Goods

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They 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 goods are related to the cited registrant’s goods as shown by the internet evidence, downloaded on 7/18/17 and attached to the 7/18/17 Office action, from the following websites:

• www.bang-olufsen.com and www.theverge.com:  These websites show the relationship between headphones/audio headphones on the one hand and loudspeakers on the other hand.
• www.bose.com and www.ebay.com:  These websites show the relationship between headphones/audio headphones on the one hand and loudspeakers on the other hand.
• www.crutchfield.com:  This website shows the relationship between stereo headphones on the one hand and amplifiers/loudspeakers on the other hand.
• www.klipsch.com:  This website shows the relationship between stereo headphones on the one hand and amplifiers/loudspeakers on the other hand.

This evidence establishes either that (1) the same entity commonly manufactures the relevant goods and markets the goods under the same mark, or that (2) the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  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).

In further support of the relationship between applicant’s and the cited registrant’s goods, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, stereo headphones on the one hand and amplifiers and/or loudspeakers on the other hand, are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

Please see also Reg. Nos. 5417767, 5412733, 5412728, 5400934, 5397724, 5384617, 5379471, 5371457 and 5305332, attached hereto, all showing the relationship between stereo headphones on the one hand and amplifiers and/or loudspeakers on the other hand.

Since the marks are similar and the goods/services are related, the examining attorney concluded that there is a likelihood of confusion as to the source of applicant’s goods and refused registration under Section 2(d) of the Trademark Act. 

Discussion of Applicant’s Arguments

Applicant has submitted various arguments in response to the refusal which, in the opinion of the examining attorney, are unpersuasive.

For example, the applicant has argued that the applicant’s mark “conveys a significantly different commercial impression” compared with the cited marks.  Specifically, “Applicant’s AEON mark is distinctly different in appearance, pronunciation, and connotation from Registrant’s EON marks…although the marks share some letters, Applicant’s mark starts with a different letter, A, which changes its appearance when viewed visually, as well as its meaning and pronunciation.”  According to applicant, “the terms AEON and EON, when viewed as text, provide an entirely different visual impression. The first letter of a word is typically the most significant in imputing meaning and impression, and in this case the first letters “A” and “E,” respectively, are distinctly different. In addition, the lengths of the two words are different.” 

The above argument is not persuasive because, in the opinion of the examining attorney, the differences noted in spelling, number of letters, and so on, to the extent they exist, are far outweighed by the similarities between the marks.  As noted above, the pertinent marks, although spelled slightly differently, 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).  Furthermore, applicant has provided no support, legal or otherwise, for its assertion that “The first letter of a word is typically the most significant in imputing meaning and impression.” 

In addition, applicant has argued that AEON and EON can have distinctly different connotations…[According to applicant] Aeon is commonly defined in, for example, dictionary.com as: “one of a class of powers or beings ... emanating from the Supreme Being ...” (http://www.dictionary.com/browse/aeon), thereby connoting something of a higher power or divinity. The word eon, on the other hand, connotes something about a long temporal period – a long time; many years. These are distinctly different connotations, which further support little to no likelihood of confusion… Applicant notes that the term ‘aeon’ can also have a time related meaning in some dictionary definitions. However, in American English, grammatical references state that eon is preferred in the United States and Canada (see, e.g., http://grammarist.com/spelling/aeon-eon/) for temporal uses (thereby at least implying that aeon should be afforded other definitions if used at all in American language).”

The above arguments are not persuasive, among other things, because applicant has submitted no evidence in support, e.g., there are no attachments such as the dictionary definitions on which applicant relies. 

Another of applicant’s arguments is that registrant’s EON marks are entitled to only a narrow scope of protection.   According to applicant, TESS shows that “there are at least 64 marks currently registered with the United States Patent and Trademark Office which contain the term ‘EON,’ and over 40 which contain the term ‘AEON,’ as well as dozens of other pending registrations using these terms. Further, dozens of these registrations and pending applications are in Class 9 (where both Applicant’s AEON and Registrant’s EON are filed).” 

The above argument is unpersuasive, among other things, because third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). 

Furthermore, applicant has not submitted evidence to support its assertions re: the alleged dilution of the federal trademark register with marks comprised of EON or AEON.  To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.

Finally, in any case, the examining attorney notes that the pertinent portion of the register is, in fact, not dilute with marks comprised of EON/AEON either alone or with other matter and registered for the types of goods offered by applicant and the cited registrant.  In this regard, please see the attached evidence in the nature of X-search results dated 3/6/17 and the 14 current registrations in International Class 9 retrieved by said search.  These results show that there is no dilution in International Class 9 for the pertinent goods and that therefore applicant’s argument that the cited mark is only entitled to a narrow scope of protection has no merit. 

Applicant’s final argument is that the applicant’s and the registrant’s goods, as amended, are sufficiently different as to avoid a likelihood of confusion.   According to applicant, “The fact that both marks’ goods may include audio equipment, by itself, is not sufficient for a finding of likelihood of confusion…Because mere involvement with audio electronics is insufficient to find marks confusingly similar, registrations are routinely granted to even identical marks owned by different parties both in connection with similar products with different functions.  See, e.g., Reg. Nos. 1,574,456 and 1,590,652 (CADENCE registered by one party for “computer programs and accompanying manuals sold as a unit for a scheduling system for health care and public health institutions and programs” and another party for “computer software for the design, testing, fabrication and installation of integrated circuits”).  Similarly, Applicant’s Mark (solely with headphone goods as amended) can coexist without confusion with those of Registrant.”

The above argument is not persuasive because, among other things, third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).  Also, again, applicant has not submitted evidence to support its comments regarding Reg. Nos. 1574456 and 1590652.  To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Finally, the evidence attached hereto and to the first Office action shows that the goods are, in fact, related.

In view of the above, the refusal to register under Section 2(d) of the Trademark Act must be continued and made final.

RESPONSES TO FINAL OFFICE ACTIONS

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@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 3/7/2018 FOR U.S. APPLICATION SERIAL NO. 87417463

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 3/7/2018 (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.