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: 4/3/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Prior Pending Applications
• Section 2(d) Partial Refusal for Likelihood of Confusion
• §1(b) & §44(d) with Intent to Perfect §44(e)
• Identification and Classification of Goods and Services Requirement

 

PRIOR PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87360712, 87360724, and 88230371 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 7, 9, 35, AND 42 ONLY

 

The stated refusal refers to International Classes 7, 9, 35, and 42 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the classes to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for such classes, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

 

SECTION 2(d) PARTIAL REFUSAL FOR LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1599235, 1727054, 1728918, 4535154, 4768851, 2652327, 4939739, 5157864, and 4292959.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s applied-for mark is HARMONIX in standard characters for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7, “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, fire-extinguishing apparatus; audio-visual, multimedia and photographic devices; Safety, security, protection and signaling devices; Video cameras; video systems; closed circuit television systems (CCTV) for security and surveillance; encoders and decoders; video surveillance systems and installations; security and surveillance systems, apparatus and devices; image processing apparatus; fire-extinguishing and suppression systems, devices and apparatus; fire, flame and smoke detection systems, devices and apparatus; fire alarms and fire alarm systems; smoke, heat and gas alarms and detectors; security systems, devices and apparatus; intrusion detection systems and accompanying accessories; central intrusion monitoring stations consisting of audio and visual annunciators; asset management and tracking systems consisting of inventory control systems, theft prevention devices and radio frequency identification (RFID), microwave, electronic, electromagnetic and acoustomagnetic tags, labels, readers, sensors, transmitters, receivers, electrical controllers and detachers; safety, security, protection and signaling devices; measuring, detecting and monitoring instruments, indicators and controllers; theft prevention apparatus, instruments and devices; magnetic and electromagnetic object detectors; transponders; antennas; alarms; sensors and detectors for use in the field of security, safety, health, fire and smoke detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental and energy management, lighting apparatus, systems and devices, building efficiency, building environmental equipment and systems; initiating devices, namely, fire alarm boxes, smoke detectors, heat detectors, flame detectors, sprinkler waterflow detectors, and switches indicating actuation of fire suppression systems; thermostats; fire hoses; fire hose nozzles; fire beaters; fire pumps; fire control devices, apparatus and equipment; fire suppression systems; sprinkler systems for fire protection and fire extinguishing; fire break glass units; dispersion systems and equipment using chemical powder and/or chemical foam; motion sensing input devices, including motion sensing controls for protecting property; electronic apparatus for monitoring and tracking, namely, sensors, cameras and monitors for alarm monitoring systems; intercom apparatus; voice evacuation and mass notification systems; nurse call systems; gas leak alarm systems; electric and electronic controls, control systems and control devices; actuators, controls and switches for air ventilation and air conditioning systems and equipment; electrical and electronic valves; Online platform for monitoring the energy management, equipment management and asset maintenance (work order managing system) in buildings; online-platform for monitoring the asset compliance and security risk prevention; online-platform for analyzing data from retail, energy, security and fire systems; online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization; digital cameras; digital transmitters; digital indicators; digital multimeters; digital signs; digital sensors; digital projectors; digital signal processors; digital door locks; digital video players; digital torque gauges; digital force gauges; digital sensory devices; digital electronic controllers; Software platform intended for use in commercial buildings to capture data from HVAC units, lighting, thermostats and other Internet of Things (IOT) devices and combine this information with revenue data to improve the customer's operating margin; computer software for collecting and distributions data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices in the field of building technology, fire protection, security, loss prevention and energy management; Software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics in the field of building automation systems and other Internet of things devices for the purpose of allowing customers to make business decisions in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, heating, ventilation and air conditioning (HVAC) systems, inventory management and loss prevention; cloud computing software for providing data analytics, data visualization, and modeling in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, HVAC systems, inventory management and loss prevention; Platform as a service (PAAS) featuring software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics; cloud computing software for providing data analytics, data visualization, and modeling in the field of building automation systems; Internet and intranet servers for providing data and software concerning energy efficiency, energy management and energy optimization; building and home automation systems comprising wireless and wired controllers, touch screens, control devices and software for apparatus, lighting, heating, ventilation and air conditioning, devices for entertainment in buildings and homes, security applications, and other applications for controlling and monitoring electricity in buildings and homes; computer software, computers, microprocessors, micro controllers for the analysis, protection, measuring, inspection, signaling, controlling, regulating, monitoring, maintenance, supervision, management, design, control and remote control of lighting, heating, cooling, humidifying, ventilating, air-conditioning, energy consumption, fire safety, access control and energy management systems;parts and fittings for all the aforesaid goods” in International Class 9, “Advertising; business management; business administration; office functions; inventory management and loss prevention services; inventory services; computerized inventory control; business monitoring services; tracking and monitoring of commercial transactions for business purposes; sales volume tracking for others; stock control services in the nature of inventory control; provision of advice and information in the fields of cloud based and non-cloud based inventory management services; provision of advice and information in the fields of cloud based and non-cloud based asset tracking; business consulting services; business advisory services relating to company performance; business data analysis, research and information services; market research; compilation and systemization of business data into computer databases; providing business intelligence services; compilation and provision of business statistical information; preparation of business reports; provision of business information and advice; business consultation services; business management in the field of energy management services; electronic data collection for business purposes; providing information about retail traffic via a computer network; providing a computer database with statistical data in the field of customer traffic trends and patterns in public areas, for commercial purposes; Store traffic analysis; Business management consultation; statistical information services relating to pedestrian movement and pedestrian counts, for commercial purposes; Online business networking services; online data processing services; online community management services” in International Class 35, and “Scientific and technological services and research and design relating thereto; industrial analysis and research services; ; Testing, authentication and quality control; Design services; Rental, hire, leasing, consultancy and information in connection with the aforesaid; ; industrial analysis and research services in the fields of security, safety, health, fire detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental, energy management, lighting apparatus and of home automation; quality control for others; design and inspection of fire extinguishing, fire alarm, detection, and suppression systems; design of anti-theft alarms, anti-theft alarm keypads and anti-theft alarm control panels, magnetic and electromagnetic object detectors and electronic article detection equipment; design of radio frequency identification (rfid), microwave, electromagnetic, radio frequency and acoustomagnetic tags, labels, readers, sensors, transmitters, receivers and electrical controllers; design of customer tracking and surveillance apparatus; design of computer software for monitoring and controlling motorways and tunnels; design of computer software for urban traffic control; engineering consulting services; design services relating to fire protection and extinguishing systems; design of security systems and monitoring systems; design of computer software for security systems and fire alarm, detection and suppression systems; computer software maintenance services relating to fire protection and extinguishing systems and to security and monitoring systems and to apparatus for such systems; design of traffic management systems and transportation systems and design of telecommunications apparatus and equipment relating thereto; design and engineering of systems for heating and cooling; design and engineering of sensing systems; Engineering and design services for others in the field of systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm and security access systems; architectural design services; technical project studies; design of fire protection systems in the nature of fire alarm, detection and suppression systems; design of security systems; computer programming relating to monitoring, surveillance and image processing; design and development of home security systems; engineering and system analysis in the field of home security systems; online system management services that allow users to remotely monitor systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm, and security access systems; providing technology information updates for home security systems via the global computer network; troubleshooting and dispatching technicians for devices; provision of advice and information in the fields of cloud based and non-cloud based energy management systems (software); calibration services; Installation and maintenance of electronic monitoring equipment and apparatus; consultancy services relating to building use; consultancy services relating to building use; consultancy services relating to the design and development of on-line computer software systems and integration of computer systems and building automation, environmental health and safety in buildings, environment of buildings and environmental quality of building; Design of computer software systems for facility management controls; Installation, maintenance, and repair of computer software systems for facility management controls; engineering, design and development of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant control, automation and optimization software, devices, apparatus and systems; technical consultation in the field of computer hardware, software, and peripherals; computer services, namely, auditing via electronically gathering, analyzing and formatting data to monitor and enable reporting to others on the performance of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant, automation and optimization devices, apparatus and systems; Provision of a web-based platform to monitor and control the energy efficiency of HVAC and cooling equipment at chiller plants; provision of consulting services for and management of the planning, integration and maintenance of HVAC and cooling equipment for the optimization of energy efficiency at chiller plants; technical research in the field of pedestrian movement; process monitoring for quality assurance; technical project studies; technological consultation in the technology field of electronic article and object surveillance, tracking and detection; providing online non-downloadable data for analyzing retail traffic; Store traffic analysis; technical support; Services relating to environmental control safety of buildings, office subdivisions, facilities and equipment of buildings; technical consultation in the field of mechanical building constructions; building environmental services; monitoring and controlling the security of software for plant (factory) optimization systems; Leasing of video surveillance, video security, security surveillance, security management, monitoring and theft-prevention software; Design and development of online platform for monitoring the energy management, equipment management and asset maintenance (work order managing system) in buildings; design and development of online-platform for monitoring the asset compliance and security risk prevention; design and development of online-platform for analyzing data from retail, energy, security and fire systems; design and developments of online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization; Platform as a service (PAAS) featuring software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics” in International Class 42.

 

The registered mark in Registration No. 1599235 is HARMONIC in typeset for “FEEDERS FOR PACKAGING MACHINES” in International Class 7.

 

The registered mark in Registration No. 1727054 is HARMONIC DRIVE TECHNOLOGIES featuring a design element for, in relevant part, “electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers” in International Class 7.

 

The registered mark in Registration No. 1728918 is HARMONIC DRIVE TECHNOLOGIES in typeset for, in relevant part, “electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers” in International Class 7.

 

The registered mark in Registration No. 4535154 is HARMONIC DRIVE in standard characters for, in relevant part, “Electric motors; motor shaft retention brakes; adjustable shaft couplings and couplings for machines; servo motors for positioning in response to electrical control signals; drives and transmissions in the nature of speed and power increasers and reducers, all except for land vehicles” in International Class 7.

 

The registered mark in Registration No. 4768851 is HARMONIC DRIVE featuring a design element for, in relevant part, “Stepping motors for machines; electric motors for machines; machine couplings and transmission components except for land vehicles, namely, adjustable couplings, drives, and transmission components in the nature of speed and power increasers and reducers” in International Class 7.

 

The registered mark in Registration No. 2652327 is HARMONIC PLANETARY in typeset for “GEAR SYSTEM, NAMELY GEARS, GEAR DRIVES, GEARHEADS, REDUCERS, SPEED REDUCERS, SPEED INCREASERS, GEARMOTORS, ACTUATORS, DRIVES, ADJUSTABLE-SPEED DRIVES” in International Class 7.

 

The registered mark in Registration No. 4939739 is HARMONIC WEALTH in standard characters for, in relevant part, “Apparatus for recording, transmission or reproduction of sound and images; digital recordings, namely, pre-recorded DVDs, high-definition DVDs, CDs, and CD-ROMs, featuring educational material in the field of personal development and corporate training” in International Class 9.

 

The registered mark in Registration No. 5157864 is DIGITAL HARMONIC in standard characters for “Scientific research and development services; providing temporary use of non-downloadable software for waveform and image analysis and characterization” in International Class 42.

 

The registered mark in Registration No. 4292959 is HARMONIX in standard characters for, in relevant part, “computer services, namely, creating an on-line community for registered users to participate in discussions, form virtual communities, engage in social networking, participate in and hold competitions, showcase their skills, get feedback from their peers, facilitate interaction among users, and participate in on-line discussion boards” in International Class 42.

 

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 and/or services 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 and/or 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.

 

Similarity of the Marks

 

In re Registration Nos. 1599235, 1727054, 1728918, 4535154, 4768851, 2652327, 4939739, and 5157864

 

Applicant’s applied-for mark is HARMONIX in standard characters. The registered mark in Registration No. 1599235 is HARMONIC in typeset.  The registered mark in Registration No. 1727054 is HARMONIC DRIVE TECHNOLOGIES featuring a design element.  The registered mark in Registration No. 1728918 is HARMONIC DRIVE TECHNOLOGIES in typeset.  The registered mark in Registration No. 4535154 is HARMONIC DRIVE in standard characters.  The registered mark in Registration No. 4768851 is HARMONIC DRIVE featuring a design element.  The registered mark in Registration No. 2652327 is HARMONIC PLANETARY in typeset.  The registered mark in Registration No. 4939739 is HARMONIC WEALTH in standard characters.  The registered mark in Registration No. 5157864 is DIGITAL HARMONIC in standard characters. 

 

Here, descriptive or generic wording has been disclaimed in the registered marks, rendering the wording HARMONIC the dominant element of the registered marks.  The dominant element of the registered marks, HARMONIC, sounds similar to the applicant’s mark HARMONIX.      

 

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).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  In the present case, the wording HARMONIC is the dominant element of the registered marks.

 

Applicant’s mark HARMONIX and the dominant element in the registered marks, HARMONIC, 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).

 

Further, regarding the design elements in some of the registered marks, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In re Registration No. 4292959

 

Applicant’s and registrant’s mark is HARMONIX in standard characters.

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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). 

 

In the present case, applicant’s mark is HARMONIX and registrant’s mark is HARMONIX.  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 services.  Id.

 

Finally, where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Therefore, applicant’s mark is similar to the registered marks.

 

Relatedness of Goods and/or Services

 

In re Registration No. 1599235

 

Applicant’s goods are for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7.

 

The goods in the registered mark are for “FEEDERS FOR PACKAGING MACHINES” in International Class 7.

 

Here, applicant’s and registrant’s goods are related.  For example, applicant’s machine tools presumably encompasses registrant’s FEEDERS FOR PACKAGING MACHINES.

 

Determining likelihood of confusion is 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 In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe machine tools, which presumably encompasses all goods of the type described, including registrant’s more narrow FEEDERS FOR PACKAGING MACHINES.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 1727054

 

Applicant’s goods are for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7.

 

The goods in the registered mark are for, in relevant part, “electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers” in International Class 7.

 

Here, applicant’s and registrant’s goods are related.  For example, applicant’s machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles presumably encompasses registrant’s electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers.

 

In this case, the application uses broad wording to describe machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles, which presumably encompasses all goods of the type described, including registrant’s more narrow electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 1728918

 

Applicant’s goods are for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7.

 

The goods in the registered mark are for, in relevant part, “electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers” in International Class 7.

 

Here, applicant’s and registrant’s goods are related.  For example, applicant’s machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles presumably encompasses registrant’s electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers.

 

In this case, the application uses broad wording to describe machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles, which presumably encompasses all goods of the type described, including registrant’s more narrow electric motors, adjustable couplings, drives, transmissions in the nature of speed and power increasers and reducers.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 4535154

 

Applicant’s goods are for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7.

 

The goods in the registered mark are for, in relevant part, “Electric motors; motor shaft retention brakes; adjustable shaft couplings and couplings for machines; servo motors for positioning in response to electrical control signals; drives and transmissions in the nature of speed and power increasers and reducers, all except for land vehicles” in International Class 7.

 

Here, applicant’s and registrant’s goods are related.  For example, applicant’s machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles presumably encompasses registrant’s electric motors, motor shaft retention brakes, adjustable shaft couplings and couplings for machines, servo motors for positioning in response to electrical control signals, and drives and transmissions in the nature of speed and power increasers and reducers, all except for land vehicles.

 

In this case, the application uses broad wording to describe machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles, which presumably encompasses all goods of the type described, including registrant’s more narrow electric motors, motor shaft retention brakes, adjustable shaft couplings and couplings for machines, servo motors for positioning in response to electrical control signals, and drives and transmissions in the nature of speed and power increasers and reducers, all except for land vehicles.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 4768851

 

Applicant’s goods are for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7.

 

The goods in the registered mark are for, in relevant part, “Stepping motors for machines; electric motors for machines; machine couplings and transmission components except for land vehicles, namely, adjustable couplings, drives, and transmission components in the nature of speed and power increasers and reducers” in International Class 7.

 

Here, applicant’s and registrant’s goods are related.  For example, applicant’s machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles presumably encompasses registrant’s stepping motors for machines, electric motors for machines, machine couplings and transmission components except for land vehicles, namely, adjustable couplings, drives, and transmission components in the nature of speed and power increasers and reducers.

 

In this case, the application uses broad wording to describe machine tools, power-operated tools, motors and engines, except for land vehicles, and machine coupling and transmission components, except for land vehicles, which presumably encompasses all goods of the type described, including registrant’s more narrow stepping motors for machines, electric motors for machines, machine couplings and transmission components except for land vehicles, namely, adjustable couplings, drives, and transmission components in the nature of speed and power increasers and reducers.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 2652327

 

Applicant’s goods are for, in relevant part, “Machine tools; power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Dispensing machines; Generators of electricity; Industrial robots; Moving and handling equipment; Pumps, compressors and fans; Sweeping, cleaning, washing and laundering machines; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves; digital electro-hydraulic proportioning valves; parts and fittings of all the aforementioned goods” in International Class 7.

 

The goods in the registered mark are for “GEAR SYSTEM, NAMELY GEARS, GEAR DRIVES, GEARHEADS, REDUCERS, SPEED REDUCERS, SPEED INCREASERS, GEARMOTORS, ACTUATORS, DRIVES, ADJUSTABLE-SPEED DRIVES” in International Class 7.

 

Here, applicant’s and registrant’s goods are related.  For example, applicant’s machine tools presumably encompasses registrant’s GEAR SYSTEM, NAMELY GEARS, GEAR DRIVES, GEARHEADS, REDUCERS, SPEED REDUCERS, SPEED INCREASERS, GEARMOTORS, ACTUATORS, DRIVES, ADJUSTABLE-SPEED DRIVES.

 

In this case, the application uses broad wording to describe machine tools, which presumably encompasses all goods of the type described, including registrant’s more narrow GEAR SYSTEM, NAMELY GEARS, GEAR DRIVES, GEARHEADS, REDUCERS, SPEED REDUCERS, SPEED INCREASERS, GEARMOTORS, ACTUATORS, DRIVES, ADJUSTABLE-SPEED DRIVES.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 4939739

 

Applicant’s goods are for, in relevant part, “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, fire-extinguishing apparatus; audio-visual, multimedia and photographic devices; Safety, security, protection and signaling devices; Video cameras; video systems; closed circuit television systems (CCTV) for security and surveillance; encoders and decoders; video surveillance systems and installations; security and surveillance systems, apparatus and devices; image processing apparatus; fire-extinguishing and suppression systems, devices and apparatus; fire, flame and smoke detection systems, devices and apparatus; fire alarms and fire alarm systems; smoke, heat and gas alarms and detectors; security systems, devices and apparatus; intrusion detection systems and accompanying accessories; central intrusion monitoring stations consisting of audio and visual annunciators; asset management and tracking systems consisting of inventory control systems, theft prevention devices and radio frequency identification (RFID), microwave, electronic, electromagnetic and acoustomagnetic tags, labels, readers, sensors, transmitters, receivers, electrical controllers and detachers; safety, security, protection and signaling devices; measuring, detecting and monitoring instruments, indicators and controllers; theft prevention apparatus, instruments and devices; magnetic and electromagnetic object detectors; transponders; antennas; alarms; sensors and detectors for use in the field of security, safety, health, fire and smoke detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental and energy management, lighting apparatus, systems and devices, building efficiency, building environmental equipment and systems; initiating devices, namely, fire alarm boxes, smoke detectors, heat detectors, flame detectors, sprinkler waterflow detectors, and switches indicating actuation of fire suppression systems; thermostats; fire hoses; fire hose nozzles; fire beaters; fire pumps; fire control devices, apparatus and equipment; fire suppression systems; sprinkler systems for fire protection and fire extinguishing; fire break glass units; dispersion systems and equipment using chemical powder and/or chemical foam; motion sensing input devices, including motion sensing controls for protecting property; electronic apparatus for monitoring and tracking, namely, sensors, cameras and monitors for alarm monitoring systems; intercom apparatus; voice evacuation and mass notification systems; nurse call systems; gas leak alarm systems; electric and electronic controls, control systems and control devices; actuators, controls and switches for air ventilation and air conditioning systems and equipment; electrical and electronic valves; Online platform for monitoring the energy management, equipment management and asset maintenance (work order managing system) in buildings; online-platform for monitoring the asset compliance and security risk prevention; online-platform for analyzing data from retail, energy, security and fire systems; online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization; digital cameras; digital transmitters; digital indicators; digital multimeters; digital signs; digital sensors; digital projectors; digital signal processors; digital door locks; digital video players; digital torque gauges; digital force gauges; digital sensory devices; digital electronic controllers; Software platform intended for use in commercial buildings to capture data from HVAC units, lighting, thermostats and other Internet of Things (IOT) devices and combine this information with revenue data to improve the customer's operating margin; computer software for collecting and distributions data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices in the field of building technology, fire protection, security, loss prevention and energy management; Software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics in the field of building automation systems and other Internet of things devices for the purpose of allowing customers to make business decisions in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, heating, ventilation and air conditioning (HVAC) systems, inventory management and loss prevention; cloud computing software for providing data analytics, data visualization, and modeling in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, HVAC systems, inventory management and loss prevention; Platform as a service (PAAS) featuring software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics; cloud computing software for providing data analytics, data visualization, and modeling in the field of building automation systems; Internet and intranet servers for providing data and software concerning energy efficiency, energy management and energy optimization; building and home automation systems comprising wireless and wired controllers, touch screens, control devices and software for apparatus, lighting, heating, ventilation and air conditioning, devices for entertainment in buildings and homes, security applications, and other applications for controlling and monitoring electricity in buildings and homes; computer software, computers, microprocessors, micro controllers for the analysis, protection, measuring, inspection, signaling, controlling, regulating, monitoring, maintenance, supervision, management, design, control and remote control of lighting, heating, cooling, humidifying, ventilating, air-conditioning, energy consumption, fire safety, access control and energy management systems; parts and fittings for all the aforesaid goods” in International Class 9.

 

The goods in the registered mark are for, in relevant part, “Apparatus for recording, transmission or reproduction of sound and images; digital recordings, namely, pre-recorded DVDs, high-definition DVDs, CDs, and CD-ROMs, featuring educational material in the field of personal development and corporate training” in International Class 9.

 

Here, applicant’s and registrant’s goods are related.  For example, registrant’s apparatus for recording, transmission or reproduction of sound and images presumably encompasses applicant’s video cameras, video systems, video surveillance systems, and digital video players.  Further, applicant’s compact discs, DVDs and other digital recording media presumably encompasses registrant’s digital recordings, namely, pre-recorded DVDs, high-definition DVDs, CDs, and CD-ROMs, featuring educational material in the field of personal development and corporate training.

 

In this case, the registration uses broad wording to describe apparatus for recording, transmission or reproduction of sound and images, which presumably encompasses all goods of the type described, including applicant’s more narrow video cameras, video systems, video surveillance systems, and digital video players.  Additionally, applicant’s compact discs, DVDs and other digital recording media presumably encompasses registrant’s digital recordings, namely, pre-recorded DVDs, high-definition DVDs, CDs, and CD-ROMs, featuring educational material in the field of personal development and corporate training.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s goods are related.

 

In re Registration No. 5157864

 

Applicant’s services are for, in relevant part, “Scientific and technological services and research and design relating thereto; industrial analysis and research services; ; Testing, authentication and quality control; Design services; Rental, hire, leasing, consultancy and information in connection with the aforesaid; ; industrial analysis and research services in the fields of security, safety, health, fire detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental, energy management, lighting apparatus and of home automation; quality control for others; design and inspection of fire extinguishing, fire alarm, detection, and suppression systems; design of anti-theft alarms, anti-theft alarm keypads and anti-theft alarm control panels, magnetic and electromagnetic object detectors and electronic article detection equipment; design of radio frequency identification (rfid), microwave, electromagnetic, radio frequency and acoustomagnetic tags, labels, readers, sensors, transmitters, receivers and electrical controllers; design of customer tracking and surveillance apparatus; design of computer software for monitoring and controlling motorways and tunnels; design of computer software for urban traffic control; engineering consulting services; design services relating to fire protection and extinguishing systems; design of security systems and monitoring systems; design of computer software for security systems and fire alarm, detection and suppression systems; computer software maintenance services relating to fire protection and extinguishing systems and to security and monitoring systems and to apparatus for such systems; design of traffic management systems and transportation systems and design of telecommunications apparatus and equipment relating thereto; design and engineering of systems for heating and cooling; design and engineering of sensing systems; Engineering and design services for others in the field of systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm and security access systems; architectural design services; technical project studies; design of fire protection systems in the nature of fire alarm, detection and suppression systems; design of security systems; computer programming relating to monitoring, surveillance and image processing; design and development of home security systems; engineering and system analysis in the field of home security systems; online system management services that allow users to remotely monitor systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm, and security access systems; providing technology information updates for home security systems via the global computer network; troubleshooting and dispatching technicians for devices; provision of advice and information in the fields of cloud based and non-cloud based energy management systems (software); calibration services; Installation and maintenance of electronic monitoring equipment and apparatus; consultancy services relating to building use; consultancy services relating to building use; consultancy services relating to the design and development of on-line computer software systems and integration of computer systems and building automation, environmental health and safety in buildings, environment of buildings and environmental quality of building; Design of computer software systems for facility management controls; Installation, maintenance, and repair of computer software systems for facility management controls; engineering, design and development of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant control, automation and optimization software, devices, apparatus and systems; technical consultation in the field of computer hardware, software, and peripherals; computer services, namely, auditing via electronically gathering, analyzing and formatting data to monitor and enable reporting to others on the performance of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant, automation and optimization devices, apparatus and systems; Provision of a web-based platform to monitor and control the energy efficiency of HVAC and cooling equipment at chiller plants; provision of consulting services for and management of the planning, integration and maintenance of HVAC and cooling equipment for the optimization of energy efficiency at chiller plants; technical research in the field of pedestrian movement; process monitoring for quality assurance; technical project studies; technological consultation in the technology field of electronic article and object surveillance, tracking and detection; providing online non-downloadable data for analyzing retail traffic; Store traffic analysis; technical support; Services relating to environmental control safety of buildings, office subdivisions, facilities and equipment of buildings; technical consultation in the field of mechanical building constructions; building environmental services; monitoring and controlling the security of software for plant (factory) optimization systems; Leasing of video surveillance, video security, security surveillance, security management, monitoring and theft-prevention software; Design and development of online platform for monitoring the energy management, equipment management and asset maintenance (work order managing system) in buildings; design and development of online-platform for monitoring the asset compliance and security risk prevention; design and development of online-platform for analyzing data from retail, energy, security and fire systems; design and developments of online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization; Platform as a service (PAAS) featuring software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics” in International Class 42.

 

The services in the registered mark are for “Scientific research and development services; providing temporary use of non-downloadable software for waveform and image analysis and characterization” in International Class 42.

 

Here, applicant’s and registrant’s services are related.  For example, registrant’s scientific research and development services presumably encompasses applicant’s scientific and technological services and research and design relating thereto; design and development of home security systems; design and development of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant control, automation and optimization software, devices, apparatus and systems; design and development of online platform for monitoring the energy management, equipment management and asset maintenance (work order managing system) in buildings; design and development of online-platform for monitoring the asset compliance and security risk prevention; design and development of online-platform for analyzing data from retail, energy, security and fire systems; design and developments of online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization.

 

In this case, the registration uses broad wording to describe scientific research and development services which presumably encompasses all services of the type described, including applicant’s more narrow scientific and technological services and research and design relating thereto; design and development of home security systems; design and development of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant control, automation and optimization software, devices, apparatus and systems; design and development of online platform for monitoring the energy management, equipment management and asset maintenance (work order managing system) in buildings; design and development of online-platform for monitoring the asset compliance and security risk prevention; design and development of online-platform for analyzing data from retail, energy, security and fire systems; design and developments of online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s services are related.

 

In re Registration No. 4292959

 

Applicant’s services are for, in relevant part, “Advertising; business management; business administration; office functions; inventory management and loss prevention services; inventory services; computerized inventory control; business monitoring services; tracking and monitoring of commercial transactions for business purposes; sales volume tracking for others; stock control services in the nature of inventory control; provision of advice and information in the fields of cloud based and non-cloud based inventory management services; provision of advice and information in the fields of cloud based and non-cloud based asset tracking; business consulting services; business advisory services relating to company performance; business data analysis, research and information services; market research; compilation and systemization of business data into computer databases; providing business intelligence services; compilation and provision of business statistical information; preparation of business reports; provision of business information and advice; business consultation services; business management in the field of energy management services; electronic data collection for business purposes; providing information about retail traffic via a computer network; providing a computer database with statistical data in the field of customer traffic trends and patterns in public areas, for commercial purposes; Store traffic analysis; Business management consultation; statistical information services relating to pedestrian movement and pedestrian counts, for commercial purposes; Online business networking services; online data processing services; online community management services” in International Class 35.

 

The services in the registered mark are for, in relevant part, “computer services, namely, creating an on-line community for registered users to participate in discussions, form virtual communities, engage in social networking, participate in and hold competitions, showcase their skills, get feedback from their peers, facilitate interaction among users, and participate in on-line discussion boards” in International Class 42.

 

Here, applicant’s and registrant’s services are related.  For example, applicant’s online community management services presumably encompasses registrant’s computer services, namely, creating an on-line community for registered users to participate in discussions, form virtual communities, engage in social networking, participate in and hold competitions, showcase their skills, get feedback from their peers, facilitate interaction among users, and participate in on-line discussion boards.

 

In this case, the application uses broad wording to describe online community management services which presumably encompasses all services of the type described, including registrant’s more narrow computer services, namely, creating an on-line community for registered users to participate in discussions, form virtual communities, engage in social networking, participate in and hold competitions, showcase their skills, get feedback from their peers, facilitate interaction among users, and participate in on-line discussion boards.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrant’s services are related.

 

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In summary, the applicant’s and registrants’ marks create the same commercial impression and the respective goods and/or services are highly related.  Therefore, consumers are likely to be confused and mistakenly believe that these goods and/or services originate from a common source.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

§1(b) & §44(d) WITH INTENT TO PERFECT §44(e)

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIREMENT

 

The wording in the identification of goods and/or services must be amended for clarity by indicating the specific nature and/or purpose of the goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §§ 1402.01, 1402.03.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Further, some of the wording in the identification of services is misclassified, and must be reclassified appropriately.

 

Finally, the identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 7:  Machine tools, namely, {specify the items by common commercial names, e.g., sifting machines}; power-operated tools, namely, { specify the items by common commercial names, e.g., grinders}; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools, namely, {specify the specific items by common commercial name, e.g., seed drills, hay balers, incorporators}; automatic vending machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment, namely, {specify the items by common commercial names in class 7, e.g., tilling machines for agricultural use, excavating machines}; Dispensing machines, namely, {specify the items by common commercial names in class 7, e.g, adhesive tape dispensing machines}; Generators of electricity; Industrial robots; Moving and handling equipment, namely, {specify the specific items by common commercial name, e.g., earth moving machines, and cargo handling machines}; {indicate type, e.g., electric, pneumatic, silt} pumps, {indicate type, e.g., gas, air, electric} compressors and fans for machine engines; Sweeping, cleaning, washing and laundering machines, namely, {specify the specific items by common commercial name, e.g., floor cleaning machines, multi-purpose high pressure washers}; Electric pumps and compressors; refrigerator compressors; gas compressors; compressors for machines; compressors for use in refrigerators; compressors for use in air conditioners; electric motors, and their parts, not for land vehicles; separating machines for chemical processing; mechanical hose reels in the nature of power-operated fire hose reels; pneumatic valve actuators and parts and fittings therefor; diffusion pumps; valves as machine components; actuators for valves, namely, {specify the specific items by common commercial name, e.g., hydraulic valve actuators}; digital electro-hydraulic proportioning valves, namely, {specify the specific items by common commercial name, e.g., hydraulic valve actuators}; parts and fittings of all the aforementioned goods

 

International Class 9:  Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, supervision, life-saving and teaching apparatus and instruments, namely, {specify the items by common commercial names in class 9, e.g, cameras, optical reflectors}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, {specify the specific items by common commercial name, e.g., fibers for conducting electrical charges, electrical conductors, conductivity meters, electrical relays and transformers, electric switches, electric current switches, voltage regulators for electric power, electric accumulators, electrical controllers}; apparatus for recording, transmission or reproduction of sound or images; bank magnetic data carriers, blank recording discs; Plastic cases specially adapted holding compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines; data processing equipment; downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; fire-extinguishing apparatus; audio-visual, multimedia and photographic devices, namely, {specify the specific items by common commercial name, e.g., cameras}; Safety, security, protection and signaling devices, namely, {specify the specific items by common commercial name, e.g., flashing and steady safety lights}; Video cameras; video systems, namely, {specify the specific items by common commercial name, e.g., video cameras}; closed circuit television systems (CCTV) for security and surveillance, namely, {specify the specific items by common commercial name, e.g., tv monitors, cameras}; encoders and decoders apparatus; video surveillance systems and installations, namely, {specify the specific items by common commercial name, e.g., electric and electronic video surveillance installations}; security and surveillance systems, apparatus and devices, namely, {specify the specific items by common commercial name, e.g., tv monitors, cameras}; image processing apparatus, namely, {specify the specific items by common commercial name, e.g., raster image processors}; fire-extinguishing and suppression systems, devices and apparatus, namely, {specify the specific items by common commercial name, e.g., lock-out valves and switches for use in carbon dioxide fire suppression systems}; fire, flame and smoke detection systems, devices and apparatus, namely, {specify the specific items by common commercial name, e.g., fire and smoke detectors}; fire alarms and fire alarm systems, namely, {if this is a “system”, applicant must specify the type of primary components in Class 9}; smoke, heat and gas alarms and detectors; security systems, devices and apparatus, namely, {specify the specific items by common commercial name, e.g., cameras}; intrusion detection systems and accompanying accessories, namely, {specify the specific items by common commercial name, e.g., anti-intrusion alarms}; central intrusion monitoring stations consisting of audio and visual annunciators, namely, {specify the specific items by common commercial name, e.g., sirens}; asset management and tracking systems consisting of inventory control systems, namely, {applicant must indicate nature/purpose of goods}, theft prevention devices, namely, {applicant must indicate nature/purpose of goods}, and radio frequency identification (RFID), microwave, electronic, electromagnetic and acoustomagnetic tags, labels, readers, sensors, transmitters, receivers, electrical controllers and detachers; safety, security, protection and signaling devices, namely, {specify the specific items by common commercial name, e.g., flashing safety lights}; measuring, detecting and monitoring instruments, indicators and controllers, namely, {specify the specific items by common commercial name, e.g., electrical controlling devices}; theft prevention apparatus, instruments and devices, namely, {specify the specific items by common commercial name, e.g., theft alarms not for vehicles}; magnetic and electromagnetic object detectors; transponders; antennas; alarms, namely, {specify the specific items by common commercial name, e.g., alarm sensors}; electric sensors and detectors for use in the field of security, safety, health, fire and smoke detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental and energy management, lighting apparatus, systems and devices, building efficiency, building environmental equipment and systems; initiating devices, namely, fire alarm boxes, smoke detectors, heat detectors, flame detectors, sprinkler water flow detectors, and switches indicating actuation of fire suppression systems; thermostats; fire hoses; fire hose nozzles; fire beaters; fire pumps; fire extinguishing apparatus, namely, fire control devices, apparatus and equipment; fire suppression systems and component parts thereof, for use in {indicate type of vehicles, e.g. racing vehicles, armored vehicles, military vehicles, commercial vehicles, marine vehicles, and aviation vehicles}, comprised of charged bottles, charge gages, mounting bases and straps, pull cables, nozzles, fittings, tubing, and stickers; sprinkler systems for fire protection and fire extinguishing; fire break glass units; dispersion systems and equipment in the nature of fire extinguishing apparatus, comprised of chemical powder and/or chemical foam; motion sensing input devices, namely, motion detectors in the nature of  including motion sensing controls for protecting property; wireless controllers to monitor and control the functioning of other electronic devices, namely, electronic apparatus for monitoring and tracking sensors, cameras and monitors for alarm monitoring systems; intercom apparatus in the nature of intercoms, audio speakers and microphones; voice evacuation and mass notification systems, namely, {specify the specific items by common commercial name, e.g., intercoms}; nurse call systems, namely, {specify the specific items by common commercial name, e.g., pagers}; gas leak alarm systems; electrical and electronic controls, control systems and control devices comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, HVAC, security and other home and office electrical power monitoring and control applications; electrical actuators, electrical controls and electrical switches for air ventilation and air conditioning systems and equipment; electrical and electronic valves for controlling gas or fluids; downloadable computer software for providing an online platform for monitoring the energy management, equipment management and asset maintenance in nature of work order managing system in buildings; downloadable computer software for providing an online-platform for monitoring the asset compliance and security risk prevention; downloadable computer software for providing an online-platform for analyzing data from retail, energy, security and fire systems; downloadable computer software for providing an online-platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization; digital cameras; electronic and optical communications instruments and components, namely, digital transmitters; digital indicators; digital multimeters; digital signs; digital sensors for{indicate use}; digital projectors, namely, digital video projectors; digital signal processors; digital door locks; digital video disc players; force measurement products, namely, digital torque gauges; force measurement products, namely, digital force gauges; digital sensory devices, namely, proximity sensors; digital electronic controllers for{indicate use}; downloadable computer software platform for use in commercial buildings to capture data from HVAC units, lighting, thermostats and other Internet of Things (IOT) devices and combine this information with revenue data to improve the customer's operating margin; downloadable computer software for collecting and distributions data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices in the field of building technology, fire protection, security, loss prevention and energy management; downloadable computer software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics in the field of building automation systems and other Internet of things devices for the purpose of allowing customers to make business decisions in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, heating, ventilation and air conditioning (HVAC) systems, inventory management and loss prevention; downloadable cloud computing software for providing data analytics, data visualization, and modeling in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, HVAC systems, inventory management and loss prevention; downloadable cloud computing software for providing data analytics, data visualization, and modeling in the field of building automation systems; Internet and intranet servers for providing data and software concerning energy efficiency, energy management and energy optimization; building and home automation systems comprising wireless and wired controllers, touch screens, control devices and software for apparatus, lighting, heating, ventilation and air conditioning, devices for entertainment in buildings and homes, security applications, and other applications for controlling and monitoring electricity in buildings and homes; downloadable computer software, computers, microprocessors, micro controllers for the analysis, protection, measuring, inspection, signaling, controlling, regulating, monitoring, maintenance, supervision, management, design, control and remote control of lighting, heating, cooling, humidifying, ventilating, air-conditioning, energy consumption, fire safety, access control and energy management systems; parts and fittings for all the aforesaid goods

 

International Class 11:  Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Security lights for outdoor and indoor use; lamps for security lighting for outdoor and indoor use, namely, {specify apparatus in Class 11 by common commercial name, e.g., lamps, cooking stoves, refrigerators}; Ambient heating, ventilating, and air conditioning and purification equipment, namely, {specify the specific items by common commercial name, e.g., air conditioners and heating installations}; Refrigerating and freezing equipment, namely, {specify the specific items by common commercial name, e.g., refrigerators}; Lighting installations and lighting reflectors; Regulating and safety accessories for water and gas installations; heating, ventilating and air conditioning units, heat pumps, air handlers, air and water cooled condensing units in the nature of refrigerating condensers and de-humidifiers, namely, {specify the specific items by common commercial name, e.g., ventilators for commercial food preparation and food serving}; cooling evaporators; heating equipment, namely, heating furnaces; ventilating equipment, namely, exhaust fans; ventilators for {indicate use}; Air conditioning apparatus; Refrigeration equipment, namely, food and beverage chilling units; Refrigeration equipment, namely, refrigeration units comprised of fans, chillers, cooling coils, sprayers and pumps; Air conditioning apparatus consisting of electric fans, water chillers, air chillers, cooling coils; valves as parts of refrigeration devices; non-mechanical separators for the cleaning and purification of oil or refrigerants; apparatus for heating, cooling, namely, thermosiphon cooler hybrid systems for power plants consisting primarily of a thermosiphon cooler; Registers, grilles and diffusers for air distribution systems, namely, {specify the specific items by common commercial name, e.g., heating and cooling registers and grilles used to control and adjust the pattern, movement, distribution and flow of air in heating, ventilating and air conditioning systems}; manual air volume dampers, namely, {specify the specific items by common commercial name, e.g., dampers used to control the air flow and pressure in heating, ventilating and air conditioning systems}; Parts for heating and air conditioning systems, namely, electronic control grids, and baffles for use with registers, grilles and diffusers for air distribution systems; control, draught, fire and smoke dampers and regulators for preventing the spread of smoke, namely, {specify the specific items by common commercial name, e.g., devices used in heating, ventilation, and air conditioning ducts to prevent the flow and spread of smoke inside the ductwork}; air handling devices and equipment, namely, {specify the specific items by common commercial name, e.g., fans and hot air blowers}; air handling and conditioning system louvres, shutters, grilles and penthouses for regulating, controlling, and adjusting pattern, movement, flow, and distribution of air in heating, ventilation, and air conditioning systems, and ducts; temperature responsive control apparatus, namely, {specify the specific items by common commercial name, e.g., thermostatic valves, thermostatic radiator valves and dampers for use in heating, ventilation and air conditioning systems}; valves for use in heating, ventilating and air conditioning application and systems, namely, {specify the specific items by common commercial name, e.g., valves for air conditioners, air valves for steam heating installations}

 

International Class 35:  Advertising services; business management; business administration services; providing office functions; inventory management and loss prevention services, namely, {specify the items by common commercial names, e.g., inventory management}; inventory services, namely, {specify the items by common commercial names, e.g., inventory control}; computerized inventory control; business monitoring services, namely, {specify the items by common commercial names, e.g., tracking web sites of others to provide details about user click traffic or visits to the web site}; tracking and monitoring of commercial transactions for business purposes; sales volume tracking for others; stock control services in the nature of inventory control; provision of advice and information in the fields of cloud based and non-cloud based inventory management services; provision of advice and information in the fields of cloud based and non-cloud based asset tracking, namely, {specify the items by common commercial names, e.g., monitoring and tracking of inventory shipments, and inventory control at the warehouse and retail store levels}; business consulting services; business advisory services relating to company performance; business data analysis, research and information services; market research; analyzing and compiling business data, namely, systemization of business data into computer databases; providing business intelligence services; compilation and provision of business statistical information; preparation of business reports; provision of business information and advice; business consultation services; business management in the field of energy management services; electronic data collection for business purposes in the fields of {indicate field}; providing business information about retail traffic via a computer network; providing an online computer database with statistical data in the field of customer traffic trends and patterns in public areas, for commercial purposes; business data analysis in the nature of store traffic analysis, namely, generating and analyzing metric, statistics, reports and analytics of retail store traffic and traffic patterns including people counting, dwell times, and line queuing; Business management consultation; statistical information services relating to pedestrian movement and pedestrian counts, for commercial purposes; Online business networking services; online data processing services; online community management services, namely, {specify the items by common commercial names, e.g., providing a website featuring an online marketplace for exchanging goods and services with other users}; Analyzing and compiling business data, namely, auditing via electronically gathering, analyzing and formatting data to monitor and enable reporting to others on the performance of building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant, automation and optimization devices, apparatus and systems; Providing business information, namely, providing online non-downloadable data for analyzing retail traffic

 

International Class 37:  Closed circuit television systems (CCTV) and security equipment installation, maintenance and repair; smoke detector installation, maintenance and repair; fire extinguisher installation, maintenance and repair; intrusion system installation, maintenance and repair; automatic sprinklers installation, maintenance and repair; emergency lights installation, maintenance and repair; access control systems installation, maintenance and repair; installation, maintenance and repair of theft prevention devices and monitoring systems comprising electronic video surveillance cameras; installation, repair and maintenance of inventory control systems; installation, repair and maintenance of electronic video surveillance cameras; installation, repair and maintenance of personnel and asset tracking devices; installation, repair and maintenance services of fire protection systems; installation, repair and maintenance of alarm, security, and access control systems; installation, repair and maintenance of electronic monitoring equipment and apparatus; installation, repair and maintenance of traffic and transport management systems; Installation, maintenance and repair of systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm, and security access systems for industrial, commercial or governmental facilities; installation, repair and maintenance of fire detection systems and sprinkler systems, piping, and special hazard warning systems; building maintenance and repair; fire alarm repair; fire alarm installation; building repair, namely, repair of fire damage; fire extinguisher recharging services; maintenance and servicing of fire alarm installations; technical support services, namely, technical advisory services in the field of installation of fire prevention equipment; providing information in the field of repair and maintenance of fire alarms; installation advisory services in the field of security and safety equipment; construction, repair, installation, maintenance services and inspection in the course of construction of fire protection systems, electrical communications systems, alarm systems, security and access control systems, ventilating and air conditioning systems, pipelines, valves, valve fittings and actuators, traffic and transport management systems, heating, and temperature sensing systems; installation, maintenance and repair services of fire protection and extinguishing apparatus, namely, fire alarms, detection and suppression systems, namely, fire extinguishers; installation, maintenance and repair of security systems, apparatus and equipment; consulting services in the field of installation and maintenance of alarm response and verification systems; consulting services in the field of installation and maintenance of vehicle security systems and vehicle navigation systems; Consulting in the field of building construction, in the nature of building use, namely, consulting services regarding the design of building infrastructure systems, planning of buildings and infrastructure systems for building, site planning, namely, surveying and engineering, building design, building engineering, building standards, building management systems, namely, design and development of on-line computer software systems and integration of computer systems and building automation, information technology for buildings, environmental health and safety in buildings, environment of buildings, environmental quality of building; provision of consulting services for and management of the planning, integration and maintenance of HVAC and cooling equipment for the optimization of energy efficiency at chiller plants; technical consultation in the field of mechanical building constructions

 

International Class 42:  Scientific and technological services, namely, industrial analysis and research services in the fields of security, safety, health, fire detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental, energy management and lighting apparatus, systems and devices, home automation; Testing and authentication in the field of {indicate field, e.g. works of art, stamps}; quality control for others; industrial design services; Rental, hire, leasing, consultancy and information in connection with the aforesaid, namely, {specify the items by common commercial names, e.g., rental of computers, leasing of computers, IT consulting services}; industrial analysis and research services in the fields of security, safety, health, fire detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental, energy management, lighting apparatus and of home automation; quality control for others; design and inspection of fire extinguishing, fire alarm, detection, and suppression systems; design of anti-theft alarms, anti-theft alarm keypads and anti-theft alarm control panels, magnetic and electromagnetic object detectors and electronic article detection equipment; design of radio frequency identification (rfid), microwave, electromagnetic, radio frequency and acoustomagnetic tags, labels, readers, sensors, transmitters, receivers and electrical controllers; design of customer tracking and surveillance apparatus in the nature of camera hardware systems for IP video surveillance, electronic surveillance and tracking apparatus in the nature of video surveillance installations, detachers and deactivators for use with inventory control and anti-theft tags and labels, tag deactivators, including hooks, tag detachers, including hooks; design of computer software for monitoring and controlling motorways and tunnels; design of computer software for urban traffic control; engineering consulting services; industrial design services in the field of fire protection and extinguishing systems, namely, fire alarm, detection and suppression systems; design of security systems and monitoring systems; design of computer software for security systems and fire alarm, detection and suppression systems; computer software maintenance services in the field of fire protection and extinguishing systems and to security and monitoring systems and to apparatus for such systems; design of traffic management systems and transportation systems and design of telecommunications apparatus and equipment relating thereto; Engineering design services, namely, design and engineering of systems for heating and cooling, sensing systems; Engineering design services, namely, engineering and design services for others in the field of systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm and security access systems; architectural design services; technical project studies, namely, conducting scientific feasibility studies in the fields of security, safety, health, fire detection and suppression, access control, intrusion prevention, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental control, energy management and lighting apparatus, systems and devices, home automation; design of fire protection systems in the nature of fire alarm, detection and suppression systems; design of home security systems; computer programming in the field of monitoring, surveillance and image processing software design; design and development of home security systems; engineering and system analysis in the field of home security systems; online system management services, namely, providing a website featuring technology that allow users to remotely monitor systems for providing heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm, and security access systems; providing technology information updates for home security systems via the global computer network; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems in the nature of anti-theft alarms, inventory control systems, theft-prevention devices, people tracking devices and asset tracking devices; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems for devices for loss prevention, store performance and inventory management; provision of advice and information in the fields of cloud based and non-cloud based energy management systems (software); calibration services; Design of computer software systems for facility management controls; Installation, maintenance, and repair of computer software systems for facility management controls; engineering, design and development of software and hardware for monitoring, operation and control for building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant control, automation and optimization software, devices, apparatus and systems; technical consultation in the field of computer hardware, software, and peripherals used for building, facility and plant controls, control devices, apparatus and systems, and building, facility and plant automation and optimization devices, apparatus and systems; online provision of non-downloadable computer applications and computer software for monitoring, operation and control for building, facility, and plant controls, control devices, apparatus and systems, and building, facility and plant automation and optimization devices, apparatus and systems; Provision a web hosting platform for monitoring and controlling the energy efficiency of HVAC and cooling equipment at chiller plants; technical research in the field of pedestrian movement; providing quality assurance services in the field of security, safety, health, fire detection and suppression, access control, intrusion, customer care, loss prevention, inventory, business and retail performance, customer traffic, environmental, and energy management, lighting apparatus, systems and devices, building, facility and plant control and management, building efficiency, power solutions, building environmental equipment and systems, including heating, ventilating, air conditioning and other building control apparatus and systems, namely, process monitoring for quality assurance; technological consultation in the technology field of electronic article and object surveillance, tracking and detection; Software as a service (SAAS) services, namely, hosting software for use by others for use in store traffic analysis; technical support, namely, monitoring technological functions of computer network systems in the fields of electronic article, object and people surveillance, monitoring, detection, analytics, and reporting; electronic monitoring of services in the field of environmental control safety of buildings, office subdivisions, facilities and equipment of buildings using computers and sensors; building environmental services, namely, inspecting buildings for the existence of mold; monitoring and controlling the security of software for plant in the nature of factory optimization systems to ensure proper functioning; design and development of online software platform for monitoring the energy management, equipment management and asset maintenance in the nature of work order managing system in buildings; design and development of online software platform for monitoring the asset compliance and security risk prevention; design and development of online software platform for analyzing data from retail, energy, security and fire systems; design and development of online software platforms to connect with security applications, smart equipment applications, enterprise control applications, risk awareness and central plant optimization; Platform as a service (PAAS) featuring computer software platforms for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics

 

International Class 45:  Legal services; security services for the physical protection of tangible property and individuals, namely, security threat analysis for protecting personal safety; surveillance services, namely, monitoring and controlling of computer equipment for safety, rescue, security and enforcement purposes; monitoring and remote monitoring of burglar and security alarms, security systems and home automation systems for security purposes; firefighting services; monitoring fire alarms; fire prevention consultation; rental of fire extinguishers; rental of fire alarms; providing information relating to the rental of fire alarms and fire extinguishers; fire detection and suppression services, namely, responding to fire alarms and providing firefighting services; fire prevention consultation, namely, provision of fire prevention-related advice; emergency response alarm monitoring services, namely, monitoring of alert devices by a remote monitoring center for the dispatch of emergency public health and security services and notification to third parties; monitoring of security systems for protecting personal property; monitoring burglar and security alarms; surveillance services, namely, electronic monitoring services for security purposes in the field of residences, businesses and commercial properties; security guard services; security guarding for facilities; providing information relating to security guard services; alarm response and verification services; home security alarm monitoring, namely, monitoring and control of alarm and security systems, of water flow and of home automation systems for security purposes; monitoring burglar and security alarms, namely, centralized burglar and fire alarm services, namely, monitoring centralized burglar and fire alarm services; security services for buildings, namely, control of building environmental access and security systems in the nature of building energy management services, security services relating to the heating, ventilation, air conditioning and lighting of buildings, by providing physical access to properties via a remote call-in locking device; theft recovery services in the nature of tracking, locating and monitoring of vehicles for security purposes via a computer network, namely, stolen vehicle tracking; tracking services for homes, people and businesses, namely, tracking, locating, and monitoring services for recovering people, and stolen property; physical security consulting services, namely, through call centers, for all of the aforesaid services; leasing of firefighting equipment; home security alarm monitoring, namely, monitoring services relating to fire protection and extinguishing systems and to security and monitoring systems and to apparatus for such systems and to computer software for such systems and apparatus; controlling and monitoring services to protect homes, residences, businesses and commercial properties, namely, monitoring building environmental access systems and building security systems for protecting personal property; home security alarm monitoring, namely, intrusion detection and control services, namely, tracking, locating and monitoring services for preventing the intrusion of burglars; forensic analysis of surveillance video for fraud and theft prevention purposes; surveillance services, namely, monitoring and controlling of computer equipment for safety, rescue, security and enforcement purposes; surveillance services, namely, monitoring of computer security system for security purposes; surveillance services, namely, monitoring and controlling building, facility and plant automation and optimization systems; surveillance services, namely, monitoring and controlling computer systems and data derived from building, facility and plant environmental, safety, security, fire, sprinkler, water flow, surveillance, tracking, emergency, energy, lighting, sound, display, threat detection, access, and asset management devices, apparatus and systems, the aforementioned as an integral service rendered for the security of persons and tangible property; rental services in the field of physical security, namely, leasing of anti-theft and security alarms, antennas, labels, tags, apparatus, devices and systems; Rental services in the field of physical security, namely, leasing of electronic security and surveillance devices; rental services in the field of physical security, namely, leasing of video surveillance, video security, security surveillance, security management, monitoring and theft-prevention software

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

ID Manual Online

 

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

 

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(s) and/or requirement(s) 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.  

 

 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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 4/3/2019 FOR U.S. APPLICATION SERIAL NO. 88236267

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/3/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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.