To: | Welltok, Inc. (ipdocket@foxrothschild.com) |
Subject: | U.S. Trademark Application Serial No. 88352525 - HARMONIX - 125542.00056 |
Sent: | January 06, 2020 07:42:42 PM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88352525
Mark: HARMONIX
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Correspondence Address:
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Applicant: Welltok, Inc.
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Reference/Docket No. 125542.00056
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 06, 2020
This Office action is in response to applicant’s communication filed on December 10, 2019.
In a previous Office action(s) dated June 10, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, an advisory regard prior pending Application Serial No. 88236267. In addition, applicant was required to satisfy the following requirement(s): amend the identification of services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: amendment of the identification of services. See TMEP §§713.02, 714.04.
The following refusal(s) have also been obviated: prior pending Application Serial No. 88236267 possible Trademark Act Section 2(d) refusal withdrawn.
However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
PARTIAL TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration No. 4292959 that it is likely to cause confusion, or to cause mistake or to deceive when used on the goods.
The examining attorney has considered the applicant’s arguments carefully, but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
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 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 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF 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).
The test under Section 2(d) of the Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.
In this case, applicant seeks to register the mark “HARMONIX.” Registration No. 4292959 is for the mark “HARMONIX.” Applicant’s mark is identical with regard to appearance, sound, meaning, and commercial impression to the marks of cited registrant. Because the marks use the same primary term “HARMONIX,” the marks convey the same overall commercial impression.
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a). In this case, the marks are identical, thus the degree of difference between the services in the proposed mark, “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” and the services in the already registered mark, “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,” is not enough to avoid the likelihood of confusion.
COMPARISON OF SERVICES
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
In this case, the services are closely related or identical. The applicant’s services are “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.” 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.” Applicant’s services and registrant’s services are highly similar and could be identical.
Applicant argues that its mark should register because the registrant’s services are “entertainment” based services focused on music experiences, while its services are healthcare based. However, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registration(s) use(s) broad wording to describe its on-line community for registered users to participate in discussions, which presumably encompasses services of the type described, including applicant’s more narrow “consumer information, health, medical information, financial, benefits, advice, opinions, and recommendations” subject matter. 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 services are related.
Finally, applicant argues that its mark should be allowed to register because other registrations using the term HARMONIC or HARMONIX are registered. However, third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services but entirely different subject matter, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording HARMONIX is weak or diluted.
SUMMARY
Since the marks are identical and the services are highly similar or could be identical, there is a substantial likelihood that purchasers would be confused as to the sources of the services.
If applicant does not respond to this Office action within the six-month period for response, the following services in International Class(es) 42 will be deleted from the application: 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. The application will then proceed with the following services in International Class(es) 42 only: 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; 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. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Caroline E. Wood/
Trademark Examining Attorney
Law Office 110
(571) 272-9243
RESPONSE GUIDANCE