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: 6/10/2019

 

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

 

SUMMARY OF ISSUES:

• Trademark Act Section 2(d) refusal
• Prior pending application advisory
• Identification of services requirement

 

LIKELIHOOD OF CONFUSION UNDER TRADEMARK ACT SECTION 2(d)

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4292959.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney encloses information regarding pending application Serial No. 88236267.  37 C.F.R. Section 2.83. There may be a likelihood of confusion under Section 2(d) of the Trademark Act between the applicant’s mark and the mark in this earlier filed application.  If the earlier-filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  If the cited registration describes the goods and services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods and services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).

 

Applicant seeks to register the mark “HARMONIX.”  Registration No. 4292959 is for the mark “HARMONIX” and earlier applicant’s mark is “HARMONIX.”  Applicant’s mark is identical with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant.  The marks convey the same overall commercial impression.  See:  In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).

 

Applicant’s services are described as “Software as a service (SAAS) featuring computer software and cloud computing software for using artificial intelligence, machine learning, cloud computing, data analytics, data mining, data processing, and consumer identification for use in accessing, tracking, monitoring, generating and manipulation of consumer action, health, medical information, financial, benefits reports and data; Platform as a service (PAAS) featuring computer software platforms for using artificial intelligence, machine learning, cloud computing, data analytics, and data mining for use in accessing, tracking, monitoring, generating, and manipulation of consumer, demographic, clinical, health, financial, medical, wellness, marketing, benefit, and administrative information and data; Platform as a service (PAAS) featuring technology that allows for the development of consumer apps, campaigns, programs, and activities; Platform as a service (PAAS) featuring computer software platforms for importing and exporting consumer information, health, medical information, financial, benefits, advice, opinions, and recommendations from users via the internet, mobile devices and mobile applications to other services, platforms, websites, mobile devices, and applications; Providing a communication and interactive web site featuring technology that allows for the electronic exchange of consumer, health, medical information, financial, benefits and data to enable users to interact with health plan administrators, health care providers, medical professionals, accountable care organizations, employers, retail pharmacies, pharmaceutical companies, financial professionals, and not for profit associations to access, enter, track, monitor and use consumer, action, demographic, clinical, health, medical, wellness, marketing, benefit, and administrative information and data; Providing an interactive web site featuring technology that enables users to enter, access, track, monitor, and generate action, health, and medical information, reports, and data.”  Registration No. 4292959 is for “computer services, namely, creating an on-line community for registered users to participate in discussions, form virtual communities, engage in social networking, participate in and hold competitions, showcase their skills, get feedback from their peers, facilitate interaction among users, and participate in on-line discussion boards.”  Earlier applicant’s goods and services are described as “Software platform intended for use in commercial buildings to capture data from HVAC units, lighting, thermostats and other Internet of Things (IOT) devices and combine this information with revenue data to improve the customer's operating margin; computer software for collecting and distributions data within computer networks, including the internet, and enabling data communication among application programs, consumer devices and industrial devices in the field of building technology, fire protection, security, loss prevention and energy management; Software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics in the field of building automation systems and other Internet of things devices for the purpose of allowing customers to make business decisions in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, heating, ventilation and air conditioning (HVAC) systems, inventory management and loss prevention; cloud computing software for providing data analytics, data visualization, and modeling in the field of commercial and retail building management systems, namely, facilities operations and energy management, security and access control systems, fire and hazard alarm systems, HVAC systems, inventory management and loss prevention; Platform as a service (PAAS) featuring software for use in data integration, data warehousing, data processing, data performance monitoring and management, data sharing, data collection, data interpretation, data queries, and data analytics; cloud computing software for providing data analytics, data visualization, and modeling in the field of building automation systems; Internet and intranet servers for providing data and software concerning energy efficiency, energy management and energy optimization; building and home automation systems comprising wireless and wired controllers, touch screens, control devices and software for apparatus, lighting, heating, ventilation and air conditioning, devices for entertainment in buildings and homes, security applications, and other applications for controlling and monitoring electricity in buildings and homes; computer software, computers, microprocessors, micro controllers for the analysis, protection, measuring, inspection, signaling, controlling, regulating, monitoring, maintenance, supervision, management, design, control and remote control of lighting, heating, cooling, humidifying, ventilating, air-conditioning, energy consumption, fire safety, access control and energy management systems.”  The services of applicant are closely related to the services of registrant and earlier applicant.  The applicant’s, earlier applicant’s and registrant’s goods and services are likely to be encountered by the same purchasers in the same channel of trade.  Given the confusing similarity of the marks, consumers familiar with the registrant’s services and earlier applicant’s goods and services are likely to believe that applicant’s services come from the same source.

 

The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).  In this case, the applicant’s services are highly similar to the services of registrant, and therefore are found in the same trade channels.

 

Because the applicant’s mark is identical to the already registered mark and the services are highly similar, there is a likelihood of confusion under Trademark Act Section 2(d).  Based on the above reasons, a likelihood of confusion must be found to exist.  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue.  The election to file or not to file a response to this issue at this time in no way limits the applicant’s right to address this issue at a later point. 

 

However, applicant must respond to the requirement(s) set forth below.

 

IDENTIFICATION OF SERVICES INDEFINITE

 

The identification of services is indefinite and must be clarified because the term “apps” is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may indicate “computer software applications”.  Applicant may adopt the following identification, if accurate:  

Software as a service (SAAS) featuring computer software and cloud computing software for using artificial intelligence, machine learning, cloud computing, data analytics, data mining, data processing, and consumer identification for use in accessing, tracking, monitoring, generating and manipulation of consumer action, health, medical information, financial, benefits reports and data; Platform as a service (PAAS) featuring computer software platforms for using artificial intelligence, machine learning, cloud computing, data analytics, and data mining for use in accessing, tracking, monitoring, generating, and manipulation of consumer, demographic, clinical, health, financial, medical, wellness, marketing, benefit, and administrative information and data; Platform as a service (PAAS) featuring technology that allows for the development of consumer computer software applications, campaigns, programs, and activities; Platform as a service (PAAS) featuring computer software platforms for importing and exporting consumer information, health, medical information, financial, benefits, advice, opinions, and recommendations from users via the internet, mobile devices and mobile applications to other services, platforms, websites, mobile devices, and applications; Providing a communication and interactive web site featuring technology that allows for the electronic exchange of consumer, health, medical information, financial, benefits and data to enable users to interact with health plan administrators, health care providers, medical professionals, accountable care organizations, employers, retail pharmacies, pharmaceutical companies, financial professionals, and not for profit associations to access, enter, track, monitor and use consumer, action, demographic, clinical, health, medical, wellness, marketing, benefit, and administrative information and data; Providing an interactive web site featuring technology that enables users to enter, access, track, monitor, and generate action, health, and medical information, reports, and data.  (Class 42)

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

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.  

 

 

 

/Caroline E. Wood/

Examining Attorney

Law Office 110

571-272-9243

caroline.wood@uspto.gov

(responses are not accepted via e-mail)

 

 

 

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 6/10/2019 FOR U.S. APPLICATION SERIAL NO. 88352525

 

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 6/10/2019 (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.