To: | Heyday Integrated Circuits SAS (Monique@scherrerpatentlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88208343 - HEYDAY - 1-HMC-058-T |
Sent: | October 29, 2019 02:20:59 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 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88208343
Mark: HEYDAY
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Correspondence Address: SCHERRER PATENT & TRADEMARK LAW, P.C.
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Applicant: Heyday Integrated Circuits SAS
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Reference/Docket No. 1-HMC-058-T
Correspondence Email Address: |
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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: October 29, 2019
This Office action is supplemental to and supersedes the previous Office action issued on March 6, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, a likelihood of confusion exists with registered marks and there is a potential of likelihood of confusion with prior pending applications for similar marks with similar goods. Further, applicant must also clarify one entry in the identification of goods.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues.
Applicant must address all issues raised in this Office action, in addition to any outstanding issues raised in the suspension letter dated March 6, 2019. The issue raised in the previous Office action is as follows and has been satisfied: providing a foreign registration, which has been submitted and reviewed. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal – Likelihood of Confusion
• NEW ISSUE: Prior Pending Applications
• Identification of Goods
Applicant must respond to all issues raised in this Office action and the previous March 6, 2019 suspension letter, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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. 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.
The applied-for mark is HEYDAY in standard characters, for “integrated circuits; integrated circuit boards; semiconductor devices; power modules; power controllers; power switches; power regulating apparatus, namely, voltage regulators for electric power; switching power supply apparatus, namely, switch-mode power supply” in International Class 9.
The mark in Reg. No. 5852869 is HEYDAY in standard characters, for the relevant goods “batteries and battery chargers” in International Clas 9.
The mark in Reg. No. 4948604 is HAY DAY in stylized lettering with a design for “electrical power supplies” in International Class 9.
The mark in Reg. No. 4970933 is HAY DAY in standard characters, for “power supplies electrical” in International Class 9.
Similarity 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)); TMEP §1207.01(b).
Reg. No. 5852869 (HEYDAY)
The applied-for mark is HEYDAY in standard characters.
The registered mark is HEYDAY in standard characters.
In the present case, applicant’s mark is HEYDAY in standard characters and registrant’s mark is HEYDAY in standard characters. 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), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). 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.
Reg. Nos. 4948604 and 4970933 (HAY DAY)
The applied-for mark is HEYDAY in standard characters.
The registered marks are HAY DAY in a stylized format with design elements and HAY DAY in standard characters.
The similarity in sound between the applicant and registrant’s marks creates the same overall commercial impression in the mind of the average purchaser. The marks are thus confusingly similar.
Similarity of the Goods
The applied-for goods are “integrated circuits; integrated circuit boards; semiconductor devices; power modules; power controllers; power switches; power regulating apparatus, namely, voltage regulators for electric power; switching power supply apparatus, namely, switch-mode power supply” in International Class 9.
The registrant’s goods in Reg. No. 5852869 are “batteries and battery chargers” in International Class 9.
The registrant’s goods in Reg. No. 4948604 are “electrical power supplies” in International Class 9.
The registrant’s goods in Reg. No. 4970933 are “power supplies electrical” in International Class 9.
Based on the foregoing, registration for the applied-for mark is refused under Section 2(d) of the Trademark Act based on a likelihood of confusion.
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.
IDENTIFICATION OF GOODS
The wording “power modules” in the identification of goods is indefinite and must be clarified because it does not specify the nature or type of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Amendment
Applicant may amend to adopt the following suggested wording, if acceptable (changes in bold, comments in bold italic):
Class 9: integrated circuits; integrated circuit boards; semiconductor devices; power modules in the nature of semiconductor power elements {specify if different type, e.g. “electronic power switches, electronic diodes”}; power controllers; power switches; power regulating apparatus, namely, voltage regulators for electric power; switching power supply apparatus, namely, switch-mode power supply
Amendment Guidelines
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.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and requirements in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
How to respond. Click to file a response to this nonfinal Office action
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
RESPONSE GUIDANCE