To: | Hanson Robotics Ltd (legal@hansonrobotics.com) |
Subject: | U.S. Trademark Application Serial No. 88031561 - GHOST - N/A |
Sent: | May 23, 2020 06:07:46 PM |
Sent As: | ecom122@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88031561
Mark: GHOST
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Correspondence Address: 209B, 2/F Photonics Centre, Phase One, 2 Science Park West Av Hong Kong
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Applicant: Hanson Robotics Ltd
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 23, 2020
This application has been removed from suspension, because the prior filed application with Serial No. 87159086 has registered. Therefore, the trademark examining attorney now issues the following new refusal: Section 2(d) Refusal. See TMEP §§706, 711.02.
On this date, the USPTO revised the federal trademark rules to require foreign-domiciled applicants to be represented by an attorney who is an active member in good standing of the bar of the highest court of any U.S. state (including the District of Columbia or any U.S. commonwealth or territory). Further, the USPTO required an applicant to provide the address of applicant’s domicile in order to determine if a U.S.-licensed attorney was required. See the U.S. Counsel Rule change webpage for more information. Thus, applicant must respond to this new requirement for the application to proceed to registration.
In addition, the following prior filed application notices for applications with Serial Nos. 87823270 and 87270471 have been withdrawn. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register the mark GHOST in standard character format for “Computer software for artificial intelligence for robots” in class 009 and “Software development in the field of artificial intelligence for robots” in class 042.
The mark in Registration No. 6008241 is GHOST ROBOTICS in standard character format for “Robots for personal, educational and hobby use and structural parts therefor” in class 009 and “Robotic transport vehicles” in class 012.
Please note, both marks are in standard character format.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant’s mark GHOST is confusingly similar to the mark GHOST ROBOTICS in Registration No. 6008241. Specifically, GHOST in applicant’s mark is highly similar in sound and appearance to the GHOST in registrant’s mark in Registration No. 6008241. Further, this shared word means “the seat of life or intelligence”. See http://www.merriam-webster.com/dictionary/ghost.
Moreover, the applicant’s mark GHOST is wholly encompassed within the registrant’s mark GHOST ROBOTICS, thus, purchasers are likely to believe that registrant’s mark merely identifies an additional line of robot goods. Specifically, purchasers are likely to believe that the mark GHOST ROBOTICS identifies a new line of robot goods offered under the GHOST line of artificial intelligence computer software goods for robots and software development services in the field of artificial intelligence for robots. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
In summary, because of the contemporaneous use of the distinctive word GHOST, it follows that purchasers are likely to believe that the marks identify the same source for robot goods for personal, educational and hobby use, artificial intelligence computer software goods for robots and software development services in the field of artificial intelligence for robots. Thus, the marks are confusingly similar.
Comparison of the Goods & Services
The applicant’s goods and services are “Computer software for artificial intelligence for robots” in class 009 and “Software development in the field of artificial intelligence for robots” in class 042.
The registrant’s goods in Registration No. 6008241 are “Robots for personal, educational and hobby use and structural parts therefor” in class 009 and “Robotic transport vehicles” in class 012.
As the attached evidence shows, the applicant's artificial intelligence computer software goods for robots and software development services in the field of artificial intelligence for robots and registrant’s robot goods for personal, educational and hobby use in Registration No. 6008241 are commercially related, because many companies provide these types of goods and services.
The attached Internet evidence consists of screenshots from Alfred, Anki and Creoqode. See http://alfred-robot.com/, http://alfred-robot.com/#rec126730689, http://anki.com/en-us/vector.html, http://anki.com/en-us/company/elemental-platform.html, http://anki.com/en-us/cozmo.html and http://www.creoqode.com/nova. This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Thus, applicant’s and registrant’s goods and 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). Accordingly, purchasers are likely to be confused as to the source of the goods and services when they encounter robot goods for personal, educational and hobby use, artificial intelligence computer software goods for robots and software development services in the field of artificial intelligence for robots offered under highly similar marks. Therefore, applicant's goods and services and registrant's goods are considered related for likelihood of confusion purposes.
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.
U.S. ATTORNEY REQUIRED
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE