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: 4/22/2019
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—Advisory
· Section 2(d) Refusal—Likelihood of
Confusion
PRIOR PENDING APPLICATIONS—ADVISORY:
The filing dates of pending U.S. Application Serial Nos. 87375402, 87537725, 87018916, 88245589, and 87020877
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.
SECTION 2(d) REFUSAL—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.:
- 5043091;
- 4399122;
- 4737684;
- 4545752;
- 5070358;
- 4952011;
- 5080465;
- 5281948;
- 5623083; and
- 5047200.
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Summary of the Marks and Goods
Applicant’s 360, in standard characters, is for:
- Class 009: Battery chargers for use with mobile electronics; Electric charging cables; Electric cords; Electrical adapters; Electrical outlets; Extension cords; Power
strips; Surge protectors; USB charging ports.
Registration No. 5043091, 360 CAM, in standard characters, is for:
- Class 009: Smart phones; Displays for smart phone, namely, liquid crystal display (LCD) and light emitting diode (LED) displays; Mobile phones; Wearable smart phones;
Wireless headsets for cellular phones and portable media players; Headsets for cellular phones and portable media players; Wireless headsets for mobile phone; Wireless headsets for smart phone;
Digital settop boxes; Leather cases for mobile phone; Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Application software for operating communication
devices; Software for operating mobile phones; Software for television for use in language localization, by means of language translation, subtitling, dubbing, closed captioning for television
programs; Tablet computers; Monitors for computer; Commercial monitors, namely, digital signage monitors and LCD monitors; Wearable computers; Computer; Printers for computer; light emitting diode
(LED) displays; Leather cases for tablet computer; Flip covers for tablet computer; Portable computers; Rechargeable electric batteries; Battery chargers; 3D
spectacles; Digital cameras; Network monitoring cameras, namely, for surveillance; Television receivers; electronic Displays for television receiver; Audio component system composed of surround sound
speakers, loudspeakers, stereo tuners, sound mixers, equalizer, audio recorders, radio receivers; Apparatus for recording, transmission or reproduction of sound or images; Earphones; Digital
Versatile Disc (DVD) players; Portable media players; Audio speakers; wireless cameras; Computer software for virtual reality game; Wearable telecommunication devices for the wireless receipt,
storage and/or transmission of data and messages, namely, wearable walkie-talkies and satellite telephones; Head-mounted video display apparatus.
Registration No. 4399122, 360 MOBILE SOLUTIONS, in standard characters, is for:
- Class 009: Cell phone battery chargers for use in vehicles; adapters.
Registration No. 4737684, 360 MOBILE SOLUTIONS SMART!, in standard characters, is for:
- Class 009: Battery chargers; USB cables; Cell phone battery chargers; Battery packs; Memory cards; Blank flash memory cards; Wireless cellular phone headsets.
Registration No. 4545752, 360° ELECTRIC, in standard characters, is for:
- Class 009: data processing computers for use in motor vehicles; vehicle on-board computer hardware, computer monitors and software for automotive application for use in
reading driver relevant data, namely, traffic and weather conditions, navigation information, travel destination information, parking information, and charging stations; vehicle on-board computer
hardware, software and monitors for automotive application for use in operating and controlling entertainment systems, communication systems, Internet access, navigation, fuel and electric battery
levels; charging stations and charging apparatus for charging electric vehicles; computer application software for mobile phones and portable computers for monitoring charging stations.
Registration No. 5070358, GEAR 360, in standard characters, is for:
- Class 009: Action cam cameras; action cameras; digital cameras; motion picture cameras; photographic apparatus and instruments, namely, stands, tripods, cases, lights,
protective camera housing and cases, arm extension device designed for use with cameras, mounting devices, camera lenses, filters, plug adaptors, a smart phone mount for a sports or action camera;
multi-frame view cameras; cameras; camera rests; camera mounts and supports; camcorders; batteries for digital cameras and camcorders; batteries for cameras; batteries; battery chargers; battery
charging apparatus for cameras; downloadable computer application software, namely, application software for viewing, managing and editing photographs; downloadable computer program software, namely,
program software for viewing, managing and editing photographs; computer software for processing digital images; computer software for organizing and viewing digital images and photographs; computer
software for data processing, namely, software to process the photographic data recorded by digital cameras; computer software to enhance the audio-visual capabilities of multimedia applications,
namely, for the integration of text, audio, graphics, still images and moving pictures.
Registration No. 4952011, POWER360, in standard characters, is for:
- Class 009: Power protection for home electronics, namely, power strips, voltage surge suppressors, voltage regulators with USB charging ports.
Registration No. 5080465, 360 PRO, in standard characters, is for:
- Class 009: Smart phones; Displays for smart phone, namely, liquid crystal display (LCD) and light emitting diode (LED) displays; Mobile phones; Wearable smart phones;
Wireless headsets for cellular phones and portable media players; Headsets for cellular phones and portable media players; Wireless headsets for mobile phone; Wireless headsets for smart phone;
Digital settop boxes; Leather cases for mobile phone; Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Application software for operating communication
devices; Software for operating mobile phones; Software for television for use in language localization, by means of language translation, subtitling, dubbing, closed captioning for television
programs; Tablet computers; Monitors for computer; Commercial monitors, namely, digital signage monitors and LCD monitors; Wearable computers; Computer; Printers for computer; light emitting diode
(LED) displays; Leather cases for tablet computer; Flip covers for tablet computer; Portable computers; Rechargeable electric batteries; Battery chargers; 3D spectacles; Digital cameras; Network
monitoring cameras, namely, for surveillance; Television receivers; electronic Displays for television receiver; Audio component system composed of surround sound speakers, loudspeakers, stereo
tuners, sound mixers, equalizer, audio recorders, radio receivers; Apparatus for recording, transmission or reproduction of sound or images; Earphones; Digital Versatile Disc (DVD) players; Portable
media players; Audio speakers; wireless cameras; Computer software for virtual reality game; Wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and
messages, namely, wearable walkie-talkies and satellite telephones; Head-mounted video display apparatus.
Registration No. 5281948, 360 SECURITY, with stylization, is for:
- Class 009: Computer peripheral devices; Computer application software for mobile phones, portable media players and handheld computers, namely, software for use in
database management and electronic storage of data; Computer operating programs and computer operating systems; Computer hardware; Chargers for electric batteries; Laptop computers; Mobile
telephones; Network communication equipment, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications
protocols; Electric monitoring apparatus, namely, computer monitors, television monitors, TV monitors, video monitors; Cameras.
Registration No. 5623083, 360 CONNECT, with stylization, is for:
- Class 009: Computer peripheral devices; Computer application software for mobile phones, portable media players and handheld computers, namely, mobile security software
for use in database management and electronic storage of data, which is not related to the promotion of credit and charge card acceptance; Computer operating programs and computer operating systems;
Computer hardware; Chargers for electric batteries; Laptop computers; Mobile telephones; Network communication equipment, namely, devices for transporting and aggregating voice, data, and video
communications across multiple network infrastructures and communications protocols.
Registration No. 5047200, SPEAKER 360, in standard characters, is for:
- Class 009: Audio receivers; Audio speakers; Portable audio speakers; Wireless audio speakers; Smart phones; Mobile phones; Wearable smart phones; Wireless telephone
headsets; Headsets for cellular phones and portable media players; Wireless headsets for mobile phone; Wireless headsets for smart phone; Digital set top boxes; Leather cases for mobile phone;
Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Application software for operating communication devices; Tablet computers; Monitors for computer; Commercial
monitors, namely, digital signage monitors and LCD monitors; Wearable computers; Computers; Printers for computer for documents or photos; light emitting diode (LED) Displays; Leather cases for
tablet computer; Flip covers for tablet computer; Portable computers; Wireless headsets for tablet computer; Rechargeable batteries; Battery chargers; 3D spectacles; Digital cameras; Network
monitoring cameras, namely, for surveillance; Television receivers; Audio component system composed of surround sound speakers, loudspeakers, tuners, sound mixers, equalizer, audio recorders and
radio receivers; Apparatus for recording, transmission or reproduction of sound or images; Earphones; DVD players; Portable media players
Basis for Likelihood of Confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered
mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15
U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic,
llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004));
see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion
analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods 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
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 and the cited registrations all share identical phrasing, being “360”, and marks
may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial
impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning
Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983)
(finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Although the cited registrations contain additional wording, incorporating the entirety of one
mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer
design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER
and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In
re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case,
the marks are all identical in part.
Finally, while Registration Nos. 5281948 and 5623083 contain stylization, a mark
in typed or standard characters—as is the case with applicant’s applied-for mark—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”).
This high degree of similarity in sound and appearance via the identical phrasing, in conjunction with the shared meaning of referencing a 360 degree turn, creates a shared
commercial impression that would likely confuse consumers as to the origin of applicant’s and registrants’ goods. See attachment from http://www.merriam-webster.com/dictionary/360.
Therefore, applicant’s mark is highly similar to registrants’ marks.
Relatedness of the Goods
The goods are compared to determine whether they are similar, commercially
related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23
(Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods need not be identical to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc.,
229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP
§1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken
belief that [the goods/services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The attached evidence from
establishes that the same entity commonly provides battery chargers and various other types of power-related goods, such as those
identified in the application and registrations. Further, these goods are marketed under the same mark, and they are sold or provided through the same trade
channels. Thus, applicant’s and registrants’ goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72
(TTAB 2009).
Conclusion
Taken together, the similarity of the marks and the relatedness of applicant’s goods to registrants’ goods result in the determination that there is a
likelihood of confusion. Therefore, registration of the applied-for mark is 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.
GENERAL 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.
/Jeffrey Sjogren/
Jeffrey Sjogren
Examining Attorney—Law Office 122
Jeffrey.Sjogren@USPTO.gov
Phone: 571-272-5279
Fax: 571-273-5578
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.
