| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88068381 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88068381/mark.png |
| LITERAL ELEMENT | H HELIOS TECHNOLOGIES |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the letter H inside of a circle with the words HELIOS TECHNOLOGIES next to it. |
| ARGUMENT(S) | |
|
In an Office Action dated December 3, 2018, the Examining Attorney refused registration under Section 2(d) due to a perceived likelihood of confusion with three prior registrations, and one prior application, which has since registered: Registration Number 4,352,174 for HELIOSMART; Registration Number 4,914,559 for HELIOS; Registration Number 5,182,332 for HELIOS MY MED FUND; and Registration Number 5,687,079 for HELIUS. Applicant respectfully submits that its mark H HELIOS TECHNOLOGIES (and design) is not likely to be confused with any of the cited registrations and requests that its arguments be considered and its mark approved for publication.
I. NO CONFUSION IS LIKELY BETWEEN APPLICANT’S MARK AND THE CITED MARKS.
Applicant respectfully submits that its mark H HELIOS TECHNOLOGIES (and design) for “holding company services, namely, provision of investment capital, financial reporting, and financial advising to subsidiaries and affiliated companies; providing investors with financial information” in Class 36 and “holding company services, namely, providing business management and business administration services for subsidiaries and affiliates” in Class 35 will not create a likelihood of confusion, as defined in Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), with any of the cited marks:
While three of the marks all contain the term HELIOS in them, they are distinguishable as a whole in sight, sound and meaning, as well as in the goods and services for which they are used and the corresponding customers and channels of trade. The fourth cited mark does not even contain HELIOS and also is distinguishable in the services provided under it. In addition, given that the four cited marks with three different owners are able to coexist, it is unclear why Applicant’s mark would not be able to coexist with them.
A comparison of the sight, sound and meaning of the marks is one of the main factors to examine in determining whether there is a likelihood of confusion. See TMEP § 1207.01. The marks at issue, while three contain the word HELIOS, are sufficiently different as a whole in sight, sound and meaning to show that no likelihood of confusion exists.
The marks obviously look different, as Applicant’s mark is H HELIOS TECHNOLOGIES (and design), and the first three cited marks are HELIOS, HELIOSMART and HELIOS MY MED FUND. Applicant’s mark has the letter H inside of a circle design, along with two terms, HELIOS and TECHNOLOGIES, while the first cited mark consists only of HELIOS; the second cited mark has SMART following HELIOS to make one larger word; and the third cited mark has the three additional words MY MED FUND. Given that none of the three cited marks contains the word TECHNOLOGIES and two of the marks have the addition of completely different words, the marks look significantly different. The fourth cited mark does not even contain HELIOS or TECHNOLOGIES, but rather HELIUS, a different word. In addition, none of the four cited marks contain the additional design element of the letter H be itself inside of a circle design.
As Applicant’s mark is different than the cited marks in sight, it follows that they also would have different sounds and meanings. Applicant’s mark is the letter H with two words with a total of eight syllables. The first cited mark sounds different because it is only one word, HELIOS, which is a total of three syllables. The second cited mark also sounds different as it has SMART following HELIOS for a total of four syllables, and the third cited mark has three additional words after HELIOS, namely MY MED FUND, for a total of six syllables. The fourth cited mark is a different word (HELIUS) with a different sound and totals only three syllables.
The differences that the cited marks have to them also change their meaning and commercial impression. Applicant’s mark H HELIOS TECHNOLOGIES (and design) relays specifically first and foremost that the services offered under it have something to do with technology, with HELIOS possibly relaying some kind of connection with the sun or heat since “Helios” is the name of the Greek god of the sun. In contrast, the first cited mark, HELIOS, does not relay anything to do with technologies, and if anything may relay a connection with sun or the Greek god of the sun. The second cited mark, with the addition of SMART, relays something to do with being smart or intelligent and possibly some kind of relation to being smart with the sun. The third cited mark, with the addition of the words MY MED FUND expressly and directly relays goods or services related to an individual’s medical funds or accounts with Applicant’s mark having no such relation. The fourth cited mark, HELIUS, is a non-existent word that would not relay any relation to technologies or to the sun. If anything, it might be identified with “helium”.
When marks portray different commercial impressions, a likelihood of confusion is unlikely. McCallum-Legaz Fish Co. v. The Frozen Food Forum, Inc., 118 U.S.P.Q. 178 (Com’r of Pat. & Trademarks 1958). In McCallum-Legaz, the Commissioner reversed a finding of confusion between FROSTY SEAS and SEAFROST, both for frozen seafood products, reasoning that FROSTY SEAS “stimulates an association with cold sea water” while SEAFROST “stimulates an association with white frost crystals.” Id. The Commissioner further found that, “Applicant’s mark does not look like opposer’s, it does not sound like opposer’s; and it stimulates a quite different mental association.” Id.; see also Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); In re Akzona, Inc., 219 U.S.P.Q. 94 (T.T.A.B. 1983) (no likelihood of confusion between SILKY TOUCH for synthetic yarns and TOUCH O’ SILK for men’s shirts because different in sound, appearance and commercial impression); and In re Mavest, Inc., 130 U.S.P.Q. 40 (T.T.A.B. 1961) (no likelihood of confusion between SQUIRETOWN and TOWN SQUIRES, both for clothing items, because they “create distinctly different commercial impressions”).
Applicant’s mark is distinguishable from the cited marks in sight, sound and meaning, creating no likelihood of confusion. If the four cited marks can coexist on the Principal Register, it is unclear how Applicant’s mark could not coexist with them.
B. The Goods/Services of the Marks are Distinguishable, as Applicant’s Holding Company Services are Very Different than those Offered under the Cited Marks.
Other than a comparison of the sight, sound and meaning of the marks, the similarity of the goods and services offered under them is the most important factor in a likelihood of confusion analysis.
Applicant’s H HELIOS TECHNOLOGIES (and design) mark is for very specific services relating to holding company services, i.e. services that a holding company offers to subsidiaries and affiliates, such as business management and administration services, as well as financial reporting and advising services. Importantly, Applicant’s services in this instance are not offered generally to any third party in the public; rather, Applicant’s services are specifically tailored and offered to subsidiaries, affiliates, and investors.
None of the cited marks is for holding company services of any kind, let alone those specifically offered by Applicant. The cited marks HELIOS and HELIOS MY MED FUND are both owned by the same entity and relate specifically to healthcare cost containment services, claims settlement for Medicare benefits and other medical benefits, as well as debit card services. Applicant’s services do not have anything to do with healthcare services of any kind, let alone those relating to healthcare costs or benefits. In addition, the services under these cited marks are not provided by a holding company, but rather are general commercial services for those needing healthcare cost-related services.
The third cited mark, HELIOSMART, is registered for a number of different services from advertising, to commercial advice related to energy, to insurance underwriting, to construction of buildings, to treatment of semi-precious stones. Importantly, none of the services under HELIOSMART include holding company services. Moreover, Applicant does not offer services similar to those of HELIOSMART under its H HELIOS TECHNOLOGIES (and design) mark because Applicant’s services are specifically holding company services offered to its subsidiaries, affiliates, and investors.
The fourth cited mark, HELIUS, is registered for financial services relating to the exchange of foreign currency, commodities, financial derivatives, interest rate products, and equities. Like the other cited marks, HELIUS is not registered for holding company services. In addition, Applicant does not offer any of the same financial services under its H HELIOS TECHNOLOGIES (and design) mark.
Given the differences between Applicant’s services and the services for which the cited marks are registered, the parties’ services also would not have the same purchasers and would not be sold through the same channels of trade. The services under Applicant’s mark are specifically holding company services for subsidiaries, affiliates, and investors. Applicant therefore does not advertise or sell its services to just any third-party entity. Confusion is not likely in the public if Applicant’s focus is on holding company services, and its services would not be advertised or sold through any of the same channels of trade of any of the cited marks. Indeed it would seem that the cited marks’ services are more similar to each other than they are to Applicant’s services, yet they are able to coexist without confusion.
Moreover, given the niche of Applicant’s holding company services, Applicant’s services are specialized and something to which service providers and consumers would pay particular attention, not to mention that Applicant’s own subsidiaries, affiliates, and investors, who are not going to be confused about who Applicant is or what services it is offering. As a result, Applicant’s customers are more sophisticated buyers paying closer attention to the specific services provided and who is offering them. The fact that Applicant’s customers would be paying closer attention to the services further alleviates any likelihood of confusion with the cited marks. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006).
II. CONCLUSION
Applicant’s mark H HELIOS TECHNOLOGIES (and design) is not likely to be confused with any of the cited marks. The marks have significant differences in their sight, sound and meaning, and Applicant’s mark has a distinctive design element not present in any of the cited marks. In addition, the goods and services offered under the marks are very different such that confusion is unlikely. If the four cited marks can coexist, it is difficult to see how Applicant’s mark coexisting with them could possibly cause confusion, particularly given Applicant’s niche of holding company services.
In light of the foregoing, Applicant respectfully requests that the likelihood of confusion rejections be lifted, and submits that this application is now in condition for passage to publication.
|
|
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use TECHNOLOGIES apart from the mark as shown. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the letter H inside of a shaded circle with the words "HELIOS TECHNOLOGIES" next to it. |
| MISCELLANEOUS STATEMENT | Applicant deletes the previously filed stippling statement. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Mindi M. Richter/ |
| SIGNATORY'S NAME | Mindi M. Richter |
| SIGNATORY'S POSITION | Attorney of record, IL & FL bar member |
| SIGNATORY'S PHONE NUMBER | 813-229-7600 |
| DATE SIGNED | 04/11/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Apr 11 09:55:30 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0190411095530504181-88068 381-62038a23858d66ae6da12 23615183a93fb1c3cedee2ff7 1ebe12794953ce6cf4e-N/A-N /A-20190411094948065433 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
In an Office Action dated December 3, 2018, the Examining Attorney refused registration under Section 2(d) due to a perceived likelihood of confusion with three prior registrations, and one prior application, which has since registered: Registration Number 4,352,174 for HELIOSMART; Registration Number 4,914,559 for HELIOS; Registration Number 5,182,332 for HELIOS MY MED FUND; and Registration Number 5,687,079 for HELIUS. Applicant respectfully submits that its mark H HELIOS TECHNOLOGIES (and design) is not likely to be confused with any of the cited registrations and requests that its arguments be considered and its mark approved for publication.
I. NO CONFUSION IS LIKELY BETWEEN APPLICANT’S MARK AND THE CITED MARKS.
Applicant respectfully submits that its mark H HELIOS TECHNOLOGIES (and design) for “holding company services, namely, provision of investment capital, financial reporting, and financial advising to subsidiaries and affiliated companies; providing investors with financial information” in Class 36 and “holding company services, namely, providing business management and business administration services for subsidiaries and affiliates” in Class 35 will not create a likelihood of confusion, as defined in Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), with any of the cited marks:
HELIOSMART (Reg. No. 4,352,174) for a variety of services, including advertising, business management, business administration, underwriting for all types of insurance; financing services; construction of buildings; transport by air, treatment of materials, namely semi-precious stones; and scientific and technological services, namely scientific research in the field of energy, in Classes 35-37, 39, 40, and 42 (owned by Heliosmart S.A. Societe Anonyme);
HELIOS (Reg. No. 4,914,559) for “healthcare cost containment for workers compensation and automobile insurance benefits administrators,” “settlement and insurance claims reporting services, namely, creating and submitting reports relating to Medicare settlements on behalf of settlement administrators,” “medical therapy management and medical evaluation services,” and “providing temporary use of on-line non-downloadable software for providing assessments and allocation forecasts for Medicare settlements,” and other related services in Classes 35, 36, 42 and 44 (owned by P2 Lower Acquisition, LLC);
HELIOS MY MED FUND (Reg. No. 5,182,332) for “debit card services” in Class 36 (owned by P2 Lower Acquisition, LLC); or
HELIUS (Reg. No. 5,687,079) for “financial services, namely, providing for the exchange of foreign currency, commodities, financial derivatives, interest rate products, and equities via the internet and intranet systems” in Class 36 (owned by Galen Dru Kahlenberg).
While three of the marks all contain the term HELIOS in them, they are distinguishable as a whole in sight, sound and meaning, as well as in the goods and services for which they are used and the corresponding customers and channels of trade. The fourth cited mark does not even contain HELIOS and also is distinguishable in the services provided under it. In addition, given that the four cited marks with three different owners are able to coexist, it is unclear why Applicant’s mark would not be able to coexist with them.
Applicant’s Mark is Sufficiently Distinguishable from the Cited Marks in Sight, Sound and Meaning.
A comparison of the sight, sound and meaning of the marks is one of the main factors to examine in determining whether there is a likelihood of confusion. See TMEP § 1207.01. The marks at issue, while three contain the word HELIOS, are sufficiently different as a whole in sight, sound and meaning to show that no likelihood of confusion exists.
The marks obviously look different, as Applicant’s mark is H HELIOS TECHNOLOGIES (and design), and the first three cited marks are HELIOS, HELIOSMART and HELIOS MY MED FUND. Applicant’s mark has the letter H inside of a circle design, along with two terms, HELIOS and TECHNOLOGIES, while the first cited mark consists only of HELIOS; the second cited mark has SMART following HELIOS to make one larger word; and the third cited mark has the three additional words MY MED FUND. Given that none of the three cited marks contains the word TECHNOLOGIES and two of the marks have the addition of completely different words, the marks look significantly different. The fourth cited mark does not even contain HELIOS or TECHNOLOGIES, but rather HELIUS, a different word. In addition, none of the four cited marks contain the additional design element of the letter H be itself inside of a circle design.
As Applicant’s mark is different than the cited marks in sight, it follows that they also would have different sounds and meanings. Applicant’s mark is the letter H with two words with a total of eight syllables. The first cited mark sounds different because it is only one word, HELIOS, which is a total of three syllables. The second cited mark also sounds different as it has SMART following HELIOS for a total of four syllables, and the third cited mark has three additional words after HELIOS, namely MY MED FUND, for a total of six syllables. The fourth cited mark is a different word (HELIUS) with a different sound and totals only three syllables.
The differences that the cited marks have to them also change their meaning and commercial impression. Applicant’s mark H HELIOS TECHNOLOGIES (and design) relays specifically first and foremost that the services offered under it have something to do with technology, with HELIOS possibly relaying some kind of connection with the sun or heat since “Helios” is the name of the Greek god of the sun. In contrast, the first cited mark, HELIOS, does not relay anything to do with technologies, and if anything may relay a connection with sun or the Greek god of the sun. The second cited mark, with the addition of SMART, relays something to do with being smart or intelligent and possibly some kind of relation to being smart with the sun. The third cited mark, with the addition of the words MY MED FUND expressly and directly relays goods or services related to an individual’s medical funds or accounts with Applicant’s mark having no such relation. The fourth cited mark, HELIUS, is a non-existent word that would not relay any relation to technologies or to the sun. If anything, it might be identified with “helium”.
When marks portray different commercial impressions, a likelihood of confusion is unlikely. McCallum-Legaz Fish Co. v. The Frozen Food Forum, Inc., 118 U.S.P.Q. 178 (Com’r of Pat. & Trademarks 1958). In McCallum-Legaz, the Commissioner reversed a finding of confusion between FROSTY SEAS and SEAFROST, both for frozen seafood products, reasoning that FROSTY SEAS “stimulates an association with cold sea water” while SEAFROST “stimulates an association with white frost crystals.” Id. The Commissioner further found that, “Applicant’s mark does not look like opposer’s, it does not sound like opposer’s; and it stimulates a quite different mental association.” Id.; see also Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); In re Akzona, Inc., 219 U.S.P.Q. 94 (T.T.A.B. 1983) (no likelihood of confusion between SILKY TOUCH for synthetic yarns and TOUCH O’ SILK for men’s shirts because different in sound, appearance and commercial impression); and In re Mavest, Inc., 130 U.S.P.Q. 40 (T.T.A.B. 1961) (no likelihood of confusion between SQUIRETOWN and TOWN SQUIRES, both for clothing items, because they “create distinctly different commercial impressions”).
Applicant’s mark is distinguishable from the cited marks in sight, sound and meaning, creating no likelihood of confusion. If the four cited marks can coexist on the Principal Register, it is unclear how Applicant’s mark could not coexist with them.
B. The Goods/Services of the Marks are Distinguishable, as Applicant’s Holding Company Services are Very Different than those Offered under the Cited Marks.
Other than a comparison of the sight, sound and meaning of the marks, the similarity of the goods and services offered under them is the most important factor in a likelihood of confusion analysis.
Applicant’s H HELIOS TECHNOLOGIES (and design) mark is for very specific services relating to holding company services, i.e. services that a holding company offers to subsidiaries and affiliates, such as business management and administration services, as well as financial reporting and advising services. Importantly, Applicant’s services in this instance are not offered generally to any third party in the public; rather, Applicant’s services are specifically tailored and offered to subsidiaries, affiliates, and investors.
None of the cited marks is for holding company services of any kind, let alone those specifically offered by Applicant. The cited marks HELIOS and HELIOS MY MED FUND are both owned by the same entity and relate specifically to healthcare cost containment services, claims settlement for Medicare benefits and other medical benefits, as well as debit card services. Applicant’s services do not have anything to do with healthcare services of any kind, let alone those relating to healthcare costs or benefits. In addition, the services under these cited marks are not provided by a holding company, but rather are general commercial services for those needing healthcare cost-related services.
The third cited mark, HELIOSMART, is registered for a number of different services from advertising, to commercial advice related to energy, to insurance underwriting, to construction of buildings, to treatment of semi-precious stones. Importantly, none of the services under HELIOSMART include holding company services. Moreover, Applicant does not offer services similar to those of HELIOSMART under its H HELIOS TECHNOLOGIES (and design) mark because Applicant’s services are specifically holding company services offered to its subsidiaries, affiliates, and investors.
The fourth cited mark, HELIUS, is registered for financial services relating to the exchange of foreign currency, commodities, financial derivatives, interest rate products, and equities. Like the other cited marks, HELIUS is not registered for holding company services. In addition, Applicant does not offer any of the same financial services under its H HELIOS TECHNOLOGIES (and design) mark.
Given the differences between Applicant’s services and the services for which the cited marks are registered, the parties’ services also would not have the same purchasers and would not be sold through the same channels of trade. The services under Applicant’s mark are specifically holding company services for subsidiaries, affiliates, and investors. Applicant therefore does not advertise or sell its services to just any third-party entity. Confusion is not likely in the public if Applicant’s focus is on holding company services, and its services would not be advertised or sold through any of the same channels of trade of any of the cited marks. Indeed it would seem that the cited marks’ services are more similar to each other than they are to Applicant’s services, yet they are able to coexist without confusion.
Moreover, given the niche of Applicant’s holding company services, Applicant’s services are specialized and something to which service providers and consumers would pay particular attention, not to mention that Applicant’s own subsidiaries, affiliates, and investors, who are not going to be confused about who Applicant is or what services it is offering. As a result, Applicant’s customers are more sophisticated buyers paying closer attention to the specific services provided and who is offering them. The fact that Applicant’s customers would be paying closer attention to the services further alleviates any likelihood of confusion with the cited marks. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006).
II. CONCLUSION
Applicant’s mark H HELIOS TECHNOLOGIES (and design) is not likely to be confused with any of the cited marks. The marks have significant differences in their sight, sound and meaning, and Applicant’s mark has a distinctive design element not present in any of the cited marks. In addition, the goods and services offered under the marks are very different such that confusion is unlikely. If the four cited marks can coexist, it is difficult to see how Applicant’s mark coexisting with them could possibly cause confusion, particularly given Applicant’s niche of holding company services.
In light of the foregoing, Applicant respectfully requests that the likelihood of confusion rejections be lifted, and submits that this application is now in condition for passage to publication.