To: | HILLCREST LABORATORIES, INC. (Trademarks@vklaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88318801 - FREESPACE - HIL4-TM062.1 |
Sent: | 5/15/2019 3:26:34 PM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88318801
MARK: FREESPACE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: HILLCREST LABORATORIES, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/15/2019
· PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—LIMITED TO SPECIFIC GOODS
· SIGNATURE REQUIRED
· IDENTIFICATION OF GOODS INDEFINITE, OVERBROAD AND MISCLASSIFIED
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—LIMITED TO SPECIFIC GOODS
The following likelihood of confusion analysis applies to the following goods described by applicant in their application: “Handheld motion controllers with an inertial sensor, used in controllers for use with gaming, virtual reality, or augmented reality systems.”
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 85765250 with the aforementioned goods. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Applicant has applied to register the mark “FREESPACE” in standard characters in International Class 009 for “handheld motion controllers with an inertial sensor, used in remote control devices, computer mice wireless presenter in the nature of a wireless remote pointer, stylus pens, controllers for use with gaming, virtual reality, or augmented reality systems,” among similarly related goods.
Registrant’s mark is “FREESPACE” in standard characters in International Class 009 for “computer game software for use with personal computers, home video game consoles used with televisions and arcade-based video game consoles,” among similar goods in International Classes 009 and 029.
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).
In the present case, applicant’s mark is “FREESPACE” and registrant’s mark is “FREESPACE.” These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Applicant has identified “handheld motion controllers with an inertial sensor, used in remote control devices, computer mice wireless presenter in the nature of a wireless remote pointer, stylus pens, controllers for use with gaming, virtual reality, or augmented reality systems” as goods it provides in International Class 009, and registrant has identified “computer game software for use with personal computers, home video game consoles used with televisions and arcade-based video game consoles” as goods it provides in International Class 009.
Conclusion
In the present case applicant’s and registrant’s marks are identical, that the applicant’s and registrant’s goods are provided through the same channels of trade, and that the goods are complimentary in nature. Therefore applicant’s mark is refused under Section 2(d) of the Trademark Act for the aforementioned goods as described above.
SIGNATURE REQUIRED
The following statements must be verified: That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF GOODS INDEFINITE, OVERBROAD AND MISCLASSIFIED
Applicant submitted the following identification with the application:
International Class 009
Handheld motion controllers with an inertial sensor, used in remote control devices, computer mice wireless presenter in the nature of a wireless remote pointer, stylus pens, controllers for use with gaming, virtual reality, or augmented reality systems; System-in-package (SIP) modules and multi-chip-modules (MCM); Application specific standard products (assp); Microprocessors that incorporate inertial sensor fusion software; Software, namely, software development kits (SDK) for enabling the evaluation and integration of FREESPACE enabled products in the fields of motion tracking, motion control, location, position, and orientation sensing.
The above bolded wording in the identification of goods needs clarification because it does not identify the goods with enough specificity, is too broad because it identifies goods in multiple International Classes. TMEP §§1402.01 and 1402.03(a).
Therefore, applicant may substitute the following wording, if accurate: “Electronic handheld motion controllers with an inertial sensor, used in remote control devices, computer mice wireless presenter in the nature of a wireless remote pointer, stylus pens, virtual reality, or augmented reality systems,” in International Class 009, whereas “Electronic handheld motion controllers with an inertial sensor, used in controllers for use with gaming” in International Class 028. Note: amending the misclassified goods to International Class 028 as described here will NOT obviate the likelihood of confusion refusal as described above.
Applicant may substitute the following wording, if accurate: “Electronic integrated circuits, namely, application specific standard products (ASSP).”
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
Additionally in the same identification, applicant has, and should not use its own registered or unregistered mark in an identification of goods. See TMEP §1402.09. Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09.
Applicant may adopt the following wording, if accurate: “Downloadable software, namely, software development kits (SDK) for enabling the evaluation and integration of products in the fields of motion tracking, motion control, location, position, and orientation sensing.”
Applicant may adopt the following identification of goods, if accurate:
International Class 009
Electronic handheld motion controllers with an inertial sensor, used in remote control devices, computer mice wireless presenter in the nature of a wireless remote pointer, stylus pens, virtual reality, or augmented reality systems; System-in-package (SIP) modules, namely, semiconductor chip housings; Multi-chip-modules (MCM), namely, integrated circuit modules; Application specific standard products (ASSP), namely, electronic integrated circuits; Microprocessors that incorporate inertial sensor fusion software; Downloadable software, namely, software development kits (SDK) for enabling the evaluation and integration of products in the fields of motion tracking, motion control, location, position, and orientation sensing.
International Class 028
Electronic handheld motion controllers with an inertial sensor, used in controllers for use with gaming consoles
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.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 009; and applicant needs a specimen for classes 028 and 042. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Advisory: Improper Use of Registration Notice in Specimen
This information is advisory only. Applicant need not respond to this issue.
Comments
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.
Goran, Bradley
/Bradley Goran/
Examining Attorney
USPTO
Law Office 107
(571) 270-7482
bradley.goran@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.