UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 3/15/2019

 

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 that applicant must address:

• Refusal – Section 2(d) – Likelihood of Confusion
• Advisory – Prior-Pending Application
• Requirement – Amend Identification of Goods
• Advisory – Multi-Class Application
• Requirement – Inquiry on Mark Significance

 

REFUSAL – SECTION 2(d) – 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. 4856111, 4856112, and 5147228.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant has applied for HUM (in standard character form) for “Technical goods, products and devices for vehicles; connected car devices and services; electronic devices and software for vehicle diagnostics, monitoring, management and tracking; electronic vehicle parts for smart cars” in Class 9.

 

U.S. Registration Nos. 4856111 and 4856112 are owned by the same registrant. No. 4856111, HUMRC (in standard character form), and No. 4856112, HUMPRO (in standard character form), are both for, in relevant part, “Electronic components, assemblies, sub-assemblies, namely, radio frequency transmitters, radio frequency receivers, radio frequency hardware in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices, connectors, cable assemblies, chip sets, cables, battery holders, remote controls; software for use with radio frequency devices; firmware for use with radio frequency devices; radio frequency products in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, and wireless sensors and devices, remote controls for use in OEM devices, remote keyless entry, security, consumer wireless, sporting device, and recreational device applications; software used in association with wireless and remote control applications to operate and activate devices, securely communicate with and access and lock and unlock items, and to permit development of devices with remote capabilities; hardware used in association with wireless and remote control applications in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices, connectors, cable assemblies, chip sets, cables, battery holders, remote controls; electronic components used in association with wireless and remote control applications in the nature of connectors, cable assemblies, chip sets, cables; electronic products used in association with wireless and remote control applications in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules; network connectivity electronic products in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; network connectivity software for establishing and connecting remote or separate access points, and devices individually and to computer networks; network connectivity components in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; encoder and decoder integrated circuits and microprocessors; encoder software; decoder software; computer software for wired and wireless communications; downloadable, integrated, and readable middleware for wired and wireless communications; firmware for wired and wireless communications; computer software for security protocol in wireless environments in the nature of information, identification, and data security and encryption; middleware for security protocol in wireless environments in the nature of information, identification, and data security and encryption; firmware for security protocol in wireless environments in the nature of information, identification, and data security and encryption; computer software for encryption in wireless environments; middleware for encryption in wireless environments; firmware for encryption in wireless environments; computer software for encoding in wireless environments; middleware for encoding in wireless environments; firmware for encoding in wireless environments; computer software for decoding in wireless environments; middleware for decoding in wireless environments; firmware for decoding in wireless environments; computer network connectivity hardware in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; computer network connectivity firmware for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; computer network connectivity software for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; software and middleware used to allow software applications to interface with remote devices; software and middleware used to allow connectivity for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; software and middleware used to allow memory storage; software and middleware used to allow device management; software and middleware used to allow device monitoring; software and middleware used to allow device tracking; software and middleware used to allow device auditing; computer software for security protocol aspects involving information, identification, and data security and encryption; computer software for use with encoders and decoders for wireless remote control applications; computer software for use with keyless entry and access control; computer software for use with door and gate openers; computer software for use with security systems; computer software for use with remote device control; computer software for use with car alarms and starters; computer software for use with remote status monitoring; computer software for use with keyless entry systems and access controls; keyless entry system and access software; keyless entry and access products in the nature of access control and alarm operation systems; computer software and electronic devices and components for use with door and gate openers; computer software and electronic devices and components for use with security systems, remote device control products; hardware for consumer applications used in wired or wireless environments in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, and wireless sensors and devices; software for consumer applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; firmware for consumer applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; computer and electronic hardware for commercial applications used in wired or wireless environments; software for commercial applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; firmware for commercial applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; hardware software and firmware for network connectivity for establishing and connecting remote or separate access points, and devices individually and to computer networks, access point establishment, access point extension, data communication, and OEM design and incorporation of devices and components; hardware software and firmware for remote monitoring of alarm devices and systems, keyless entry systems, wireless sensors and devices, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; hardware software and firmware for alarm device and systems keyless entry, wireless sensor, remote control, electronic sensor, receiver, transmitter, transceiver, RF module, and data module device management; hardware software and firmware for alarm devices and systems, keyless entry, wireless sensor, remote control, electronic sensor, receiver, transmitter, transceiver, RF module, and data module device control; hardware software and firmware for machine to machine applications for control of a communication with alarm devices and systems, keyless entry systems, wireless sensors and devices, remote controls, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; computer and electronic hardware and software and firmware for secure and unsecure communication of voice, audio, video, data and remote control of and with alarm devices and systems, keyless entry devices and systems, wireless sensors, remote controls, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; completed electronic wireless products, namely, radio frequency transmitters, radio frequency receivers, radio frequency hardware in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices, connectors, cable assemblies, chip sets, cables, battery holders, remote controls; software for use with radio frequency devices; firmware for use with radio frequency devices; radio frequency products in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices, connectors, cable assemblies, remote controls for use in OEM devices, remote keyless entry, security, consumer wireless, sporting device, and recreational device applications; software used in association with wireless and remote control applications to operate and activate devices, securely communicate with and access and lock and unlock items, and to permit development of devices with remote capabilities; hardware used in association with wireless and remote control applications in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices; electronic components used in association with wireless and remote control applications in the nature of connectors, cable assemblies, chip sets, cables, electronic products used in association with wireless and remote control applications for use with receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices; network connectivity electronic products in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; network connectivity software for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; network connectivity components in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; encoder and decoder integrated circuits and microprocessors; encoder software, decoder software; computer software for wired and wireless communications; downloadable, integrated, and readable middleware for wired and wireless communications; firmware for wired and wireless communications; authentication software for authentication of digital signatures and device identifications; computer software for security protocol in wireless environments in the nature of information, identification, and data security and encryption; middleware for security protocol in wireless environments in the nature of information, identification, and data security and encryption; firmware for security protocol in wireless environments in the nature of information, identification, and data security and encryption; computer software for encryption in wireless environments; middleware for encryption in wireless environments; firmware for encryption in wireless environments; computer software for encoding in wireless environments; middleware for encoding in wireless environments; firmware for encoding in wireless environments; computer software for decoding in wireless environments; middleware for decoding in wireless environments; firmware for decoding in wireless environments; computer network connectivity hardware in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; computer network connectivity firmware for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; computer network connectivity software for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; software and middleware used to allow software applications to interface with remote devices; software and middleware used to allow connectivity for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; software and middleware used to allow memory storage; software and middleware used to allow device management; software and middleware used to allow device monitoring; software and middleware used to allow device tracking; software and middleware used to allow device auditing; computer software for security protocol aspects for information, identification, and data security and encryption; computer software for use with encoders and decoders for wireless remote control applications; computer software for use with keyless entry and access control; computer software for use with door and gate openers; computer software for use with security systems; computer software for use with remote device control; computer software for use with car alarms and starters; computer software for use with remote status monitoring; computer software for use with keyless entry systems and access controls;, keyless entry system and access software; keyless entry and access products in the nature of access control and alarm systems; computer software for use with door and gate openers; computer software for use with security systems, remote device control products, automobile alarm and starter products and components; software for consumer applications used in wired or wireless environments for information transfer, identification, data security, and encryption; software for commercial applications used in wired or wireless environments for information transfer, identification, data security, and encryption, firmware for commercial applications used in wired or wireless environments for information transfer, identification, data security, and encryption; hardware software and firmware for network connectivity for establishing and connecting remote or separate access points, and devices individually and to computer networks; hardware software and firmware for remote monitoring of alarm devices and systems, keyless entry systems, wireless sensors and devices, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; hardware software and firmware for alarm device and systems keyless entry, wireless sensor, remote control, electronic sensor, receiver, transmitter, transceiver, RF module, and data module device management; hardware software and firmware for alarm device and systems keyless entry, wireless sensor, remote control, electronic sensor, receiver, transmitter, transceiver, RF module, and data module device control; hardware software and firmware for machine to machine applications, control, and communication with alarm devices and systems, keyless entry systems, wireless sensors and devices, remote controls, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; computer and electronic hardware and software and firmware for secure and unsecure communication of voice, audio, video, data and remote control of and with alarm devices and systems, keyless entry devices and systems, wireless sensors, remote controls, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; wireless radio frequency modules; integrated circuits; hybrid and non-hybrid electronic modules RF, wireless, data handling, and GPS signal and information use for consumer and commercial applications, for use in wired or wireless environments, network connectivity, remote monitoring, management, device control, and machine to machine applications, and for secure and unsecure communication of voice, audio, video, data and/or remote control; radio frequency remote control transmitters and receivers; computer and electronic hardware, software, and firmware for secure and unsecure communication in wired or wireless environments, network connectivity, remote monitoring, management, and machine to machine applications; electric and electronic connectors and antennas; electronic cable assemblies; completed electronic products designed for customization by OEMs for consumer and commercial applications, namely, radio frequency hardware in the nature of transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices; software for use with radio frequency devices; firmware for use with radio frequency devices; radio frequency products in the nature of transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices, remote controls for use in OEM devices, remote keyless entry, security, consumer wireless, sporting device, and recreational device applications; software used in association with wireless and remote control applications to operate and activate devices, securely communicate with and access and lock and unlock items, and to permit development of devices with remote capabilities; hardware used in association with wireless and remote control applications in the nature of transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices; electronic components used in association with wireless and remote control applications in the nature of connectors, cable assemblies, chip sets, cables; electronic products used in association with wireless and remote control applications in the nature of transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, wireless sensors and devices; network connectivity electronic products in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; network connectivity software for establishing and connecting remote or separate access points, and devices individually and to computer networks; network connectivity components in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; encoder and decoder integrated circuits and microprocessors; encoder software; decoder software; computer software for wired and wireless communications; downloadable, integrated, and readable middleware for wired and wireless communications; firmware for wired and wireless communications; computer software for security protocol in wireless environments in the nature of information, identification, and data security and encryption; middleware for security protocol in wireless environments in the nature of information, identification, and data security and encryption; firmware for security protocol in wireless environments in the nature of information, identification, and data security and encryption; computer software for encryption in wireless environments; middleware for encryption in wireless environments; firmware for encryption in wireless environments; computer software for encoding in wireless environments; middleware for encoding in wireless environments; firmware for encoding in wireless environments; computer software for decoding in wireless environments; middleware for decoding in wireless environments; firmware for decoding in wireless environments; computer network connectivity hardware in the nature of access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; computer network connectivity firmware for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; computer network connectivity software for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; software and middleware used to allow software applications to interface with remote devices; software and middleware used to allow connectivity for connecting access point establishment and extension devices and components, data communication devices and components, and OEM design and incorporation components; software and middleware used to allow memory storage; software and middleware used to allow device management; software and middleware used to allow device monitoring; software and middleware used to allow device tracking; software and middleware used to allow device auditing; computer software for security protocol aspects for information, identification, and data security and encryption; computer software for use with encoders and decoders for wireless remote control applications; computer software for use with keyless entry and access control; computer software for use with door and gate openers; computer software for use with security systems; computer software for use with remote device control; computer software for use with car alarms and starters; computer software for use with remote status monitoring; computer software for use with keyless entry systems and access controls; keyless entry system and access software; keyless entry and access products in the nature of access control and alarm monitoring systems; computer software and electronic components for use with door and gate openers; computer software and electronic components for use with security systems; remote device control products; hardware for consumer applications used in wired or wireless environments in the nature of receivers, transmitters, transceivers, antennas, RF modules, integrated circuits, data modules, GPS modules, and wireless sensors and devices; software for consumer applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; firmware for consumer applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; computer and electronic hardware for commercial applications used in wired or wireless environments; software for commercial applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; firmware for commercial applications used in wired or wireless environments for data and command communication, OEM device development design and incorporation, device operation and activation, secure access and lock and unlock activities, information, identification, and data security and encryption, access point establishment, and data communication; hardware software and firmware for network connectivity for establishing and connecting remote or separate access points, and devices individually and to computer networks, access point establishment, access point extension, data communication, and OEM design and incorporation of devices and components; hardware software and firmware for remote monitoring of alarm devices and systems, keyless entry systems, wireless sensors and devices, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; hardware software and firmware for alarm device and systems keyless entry, wireless sensor, remote control, electronic sensor, receiver, transmitter, transceiver, RF module, and data module device management, hardware software and firmware for alarm devices and systems, keyless entry, wireless sensor, remote control, electronic sensor, receiver, transmitter, transceiver, RF module, and data module device control; hardware software and firmware for machine to machine applications for control of a communication with alarm devices and systems, keyless entry systems, wireless sensors and devices, remote controls, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules; computer and electronic hardware and software and firmware for secure and unsecure communication of voice, audio, video, data and remote control of and with alarm devices and systems, keyless entry devices and systems, wireless sensors, remote controls, electronic sensors, receivers, transmitters, transceivers, RF modules, and data modules” in Class 9.

Registration No. 5147228, HUM (in standard character form), is for “Computer hardware and software system, namely, on-board diagnostic (OBD) reader, radio transceiver and speaker for transmission of voice, data and information, requesting roadside assistance, providing vehicle location and recovery, real-time vehicle diagnostics, emergency incident detection and dispatching of emergency roadside assistance; cell phone application software for providing a parking meter timer; cell phone application software for locating vehicle on map; cell phone application software that allows users to set reminders for vehicle maintenance notifications such as oil changes and tire rotations” in Class 9, “Advertising and promotional services including promoting the goods and services of other by providing discounts including auto repair and travel service discounts” in Class 35, “Emergency roadside assistance services, namely, responding to calls for roadside assistance, flat tire changing, emergency fuel supplying and battery jump starting; providing automotive mechanic advice and information by telephone; performance monitoring in the nature of vehicle maintenance” in Class 37, “Telematic sending of information; telecommunication services, namely, providing e-mail notification alerts with vehicle diagnostic information and vehicle maintenance reminders via web and cell phone applications; telecommunication services, namely, providing the ability to contact a remote call center from a vehicle to report accidents and emergency situations so that vehicle location can be determined and emergency personnel dispatched” in Class 38, “Emergency roadside assistance services, namely, towing, winch-out and key delivery services; vehicle location services in the nature of providing geographic information regarding the location of vehicles” in Class 39, “Providing information regarding vehicle diagnostics and vehicle diagnostic records in the field of vehicle repair and maintenance via a computer network; vehicle emissions monitoring” in Class 42, and “Emergency roadside assistance services, namely, opening of locks; stolen vehicle recovery services; emergency monitoring services, namely, monitoring of vehicle electronic device by remote call center and arranging for dispatch of emergency personnel when accident is detected; stolen vehicle tracking services” in Class 45.

 

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 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 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 [and services] and differences in the marks.”); TMEP §1207.01.

 

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Applicant’s mark HUM is highly similar to No. 4856111, HUMRC, and No. 4856112, HUMPRO, because each mark begins with HUM. That No. 4856111 also contains “RC” and No. 4856112 also contains “PRO” does not obviate this finding, as it is well-established that consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

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 HUM and No. 5147228’s mark is HUM.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of the Goods and Services

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

The fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d).  See TMEP §1207.01(d)(v).  The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion.  In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)).

 

The goods and services of the parties are closely related. The goods and services of applicant, “Technical goods, products and devices for vehicles; connected car devices and services; electronic devices and software for vehicle diagnostics, monitoring, management and tracking; electronic vehicle parts for smart cars,” are so broadly written that they encompass a wide array of goods and services which involve and/or concern vehicles, including the above-noted goods of Nos. 4856111 and 4856112, and the above-noted goods and services of No. 5147228.

 

Thus, consumers familiar with the above-noted goods of Nos. 4856111 and 4856112 in connection with the marks HUMRC and HUMPRO, and the above-noted goods and services of No. 5147228 in connection with the mark HUM, upon encountering applicant’s “Technical goods, products and devices for vehicles; connected car devices and services; electronic devices and software for vehicle diagnostics, monitoring, management and tracking; electronic vehicle parts for smart cars” in connection with the mark HUM, are likely to be confused and believe that the goods originate with the same source. Registration on the Principal Register is, therefore, 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.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Advisory – Prior-Pending Application

 

The filing date of pending U.S. Application Serial No. 87574855 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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 mark in the referenced application.  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.

 

Upon receipt of applicant’s response resolving the following requirements, action on this application will be suspended pending the disposition of U.S. Application Serial No. 87574855.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

 

The wording “Technical goods, products and devices for vehicles,” “connected car devices and services,” “electronic devices for vehicle diagnostics, monitoring, management and tracking,” and “electronic vehicle parts for smart cars” in the identification of goods is indefinite and must be clarified because the specific nature/type of the goods and services, as well as their classification, is unclear. For example, “connected car devices, namely, vehicle tracking devices comprised of cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle monitoring and anti-theft vehicle alarms” is in Class 9, “connected car devices, namely, motor vehicle alarm systems” is in Class 12, “connected car device services, namely, car alarm repair” is in Class 37, “connected car device services, namely, transmission of car alarm security data” is in Class 38, “connected car device services, namely, opening of car door locks” is in Class 45, etc. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 7: Technical goods, products and devices for vehicles, namely, [specify type appropriate for Class 7, such as fuel pumps for land vehicles]

 

Class 9: Technical goods, products and devices for vehicles, namely, [specify type, such as GPS navigation device]; connected car devices, namely, [specify type, such as vehicle tracking devices comprised of cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle monitoring and anti-theft vehicle alarms]; electronic devices in the nature of [specify type, such as electric sensors] and software for vehicle diagnostics, monitoring, management and tracking; electronic vehicle parts for smart cars, namely, [specify type appropriate for Class 9, such as GPS navigation device]

 

Class 12: Technical goods, products and devices for vehicles, namely, [specify type appropriate for Class 12, such as back-up warning alarms for vehicles]; connected car devices, namely, [specify type appropriate for Class 12, such as anti-theft alarms for vehicles]; electronic devices for vehicle diagnostics, monitoring, management and tracking, namely, [specify type appropriate for Class 12]; electronic vehicle parts for smart cars, namely, [specify type, such as antitheft alarms for vehicles]

 

Class 35: Connected car services, namely, [specify type, such as scheduling vehicle repairs for others]

 

Class 37: Connected car services, namely, [specify type, such as car alarm repair]

 

Class 38: Connected car device services, namely, [specify type, such as transmission of car alarm security data]

 

Class 39: Connected car device services, namely, [specify type, such as online transportation reservation services]

 

Class 42: Connected car device services, namely, [specify type, such as providing temporary use of non-downloadable software for scheduling vehicle maintenance]

 

Class 45: Connected car device services, namely, [specify type, such as opening of car door locks]

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

Advisory – Multi-Class Application

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least nine classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

REQUIREMENT – INQUIRY ON SIGNIFICANCE

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “HUM” has any significance in the automotive trade or industry or as applied to applicant’s goods and services, if “HUM” is an acronym, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

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.  

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Joan Blazich/

Examining Attorney

Law Office 122

571-272-7810

joan.blazich@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/15/2019 FOR U.S. APPLICATION SERIAL NO. 88237752

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/15/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.