To: | Plantronics, Inc. (trademarks@plantronics.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88343349 - POLY - N/A |
Sent: | 5/15/2019 2:46:11 PM |
Sent As: | ECOM113@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88343349
MARK: POLY
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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: Plantronics, 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
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.
Preliminary Amendment
On April 17, 2019, applicant filed a preliminary amendment, claiming ownership of Prior Registrations. These claims are acceptable and have been entered.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is POLY (design plus words) for “Communications services; Telecommunications services” in Class 38.
The registered mark is POLYNET for the relevant services “data transmission; digital network telecommunication services; data delivery services, namely, transmission of data and audiovisual content by means of the Internet and other electronic communications networks; streaming of data; streaming of data and audiovisual content via the Internet and other electronic communications networks; transmission and delivery of audio and visual content via the Internet and other electronic communications networks; transmission of streamed data and audiovisual content via the Internet and other electronic communications networks; electronic transmission of messages, audiovisual content and data” in Class 38.
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 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).
In this case, the applied-for mark is POLY (design plus words) and the registered mark is POLYNET. These marks are similar.
First, the marks share the identical term POLY, which is the only wording in the applied-for mark. POLY means “More than one; many; much”. See http://www.ahdictionary.com/word/search.html?q=poly.
Furthermore, POLY is the dominant portion of each mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
For POLYNET, NET means “A complex, interconnected group or system” or “The internet.” See http://www.ahdictionary.com/word/search.html?id=N5078200. In the context of registrant’s telecommunications services by means of the internet, this wording merely indicates that the services utilize these kinds of networks. Therefore, consumers are less likely to focus on this portion of the mark, rendering POLY the dominant portion of the mark
For the applied-for mark, POLY is the only wording in the mark and so is the dominant literal element of that mark.
The applied-for mark has a design element of a circular propeller. However, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the r services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the applied-for mark contains a propeller design. This design does not alter the meaning or commercial impression of the word POLY but acts as a decorative element in the mark. Thus, this design does not alter the overall similarity created by the identical wording.
Therefore, as the marks share an identical term, the additional term in the registered mark is descriptive and does not alter this overall similarity, and the design in the registered mark does not alter the similarity of the literal elements, these marks are confusingly similar.
Relatedness of the Services
Here, applicant’s services are “Communications services; Telecommunications services” in Class 38.
The registrant’s relevant services are “Electronic data transmission; digital network telecommunication services; data delivery services, namely, transmission of data and audiovisual content by means of the Internet and other electronic communications networks; streaming of data; streaming of data and audiovisual content via the Internet and other electronic communications networks; transmission and delivery of audio and visual content via the Internet and other electronic communications networks; transmission of streamed data and audiovisual content via the Internet and other electronic communications networks; electronic transmission of messages, audiovisual content and data” in Class 38.
These services are related. Specifically, applicant’s services are very broadly defined and encompass the registrant’s services.
In this case, the application uses broad wording to describe the communication and telecommunication services, which presumably encompasses all services of the type described, including registrant’s more narrow services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Specifically, “telecommunications” and “communications” are very broad. See http://www.ahdictionary.com/word/search.html?q=telecommunications (defining telecommunications as “The science and technology of communication at a distance by transmission of electrical impulses, electromagnetic waves, or optical pulses, as by telephone, radio, television, or computer network:”); http://www.ahdictionary.com/word/search.html?q=communication (defining “communication” as “The exchange of thoughts, messages, or information, as by speech, signals, writing, or behavior.”). Thus, applicant’s extremely broadly defined services encompass registrant’s services in Class 38 and these services are related.
Applicant has claimed ownership of three Prior Registrations for “POLYCOM”, among others. However, these prior registrations have additional matter in the marks and so are different from the applied-for mark. Thus, the claim of these prior registrations does not obviate the Section 2(d) Refusal.
Because the marks are confusingly similar and the services are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal – Likelihood of Confusion
PRIOR PENDING APPLICATIONS ADVISORY
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.
However, to avoid abandonment, applicant must respond to the Section 2(d) Refusal above and Requirement below.
REQUIREMENTS
IDENTIFICATION OF SERVICES AMENDMENTS REQUIRED
The wording “Communications services” and “Telecommunications services” is indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clearly identify the specific services provided, e.g., Digital network telecommunications services, Radio communication, etc.
Applicant may adopt the following Identification of Services, if accurate:
Class 38: Communications services, namely, [clarify services, e.g., radio communication, etc.]; Telecommunications services, namely, [clarify services, e.g., digital network telecommunications services, etc.]
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.
MARK DESCRIPTION AMENDMENTS REQUIRED
The following description is suggested, if accurate:
The mark consists of the wording “POLY” in a lower-case font. To the left of the wording is a highly stylized propeller design formed by the design of a circle with three tangent bands emerging from the circle, forming an overall triangular design.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Alison Keeley/
Examining Attorney
Law Office 113
(571) 272 - 4514
Alison.Keeley@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.