To: | Sentry Industries, Inc. (eteas@gbpatent.com) |
Subject: | U.S. Trademark Application Serial No. 88393771 - THE ART OF SOUND - T57058 |
Sent: | July 03, 2019 03:20:52 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88393771
Mark: THE ART OF SOUND
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Correspondence Address:
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Applicant: Sentry Industries, Inc.
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Reference/Docket No. T57058
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 03, 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.
The applicant must address the following issues:
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5127560. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
The applicant has applied to register THE ART OF SOUND for “(Based on Use) Earphones, headphones and ear buds; (Based on intent-to-use) Audio speakers; Wireless indoor and outdoor speakers; Calculators; Cables, namely, audio cables, power cables and electric charging cables; Chargers, namely, battery chargers, battery chargers for computers and battery chargers for cell phones; Battery packs; Accessories for mobile phones, namely, battery chargers, mobile phone auxiliary cables and USB cables for mobile phones, audio cables, power cables and electric charging cables; Electrical adapters; Power supply connectors and adaptors for use with portable electronic devices; Electric cords; Wireless chargers; Harnesses specially adapted for holding electronic devices, namely, mobile phones; Cell phone mounts.”
The registered mark is ART+SOUND for “Wireless headphones; wireless headsets for cellular or mobile phones; wireless indoor and outdoor speakers; wireless speakerphones; wireless home audio speakers; wireless computer audio speakers; audio speakers for televisions; audio systems, namely, stereo receivers, stereo signal processors, amplifiers, and speakers; mobile phone and tablet computer accessories, namely, protective cases, electronic docking stations, stands adapted for mobile phones and tablet computers, audio speakers, headphones, battery chargers, electric cables, screen protectors comprised of plastic, acrylic and glass adapted for use with portable electronic devices, excluding gaming apparatus, stylus for computers, tablet computers and mobile phones, battery packs, lenses for cameras incorporated in mobile electronic devices, and protective skins in the nature of fitted plastic skins for covering and protecting mobile phones and tablet computers; DJ audio speakers, DJ equipment, namely, turntables being record players, audio recorders, audio amplifiers, microphones and audio speakers; novelty speakers; home theater systems comprising remotes controls, DVD players, audio amplifiers audio speakers, soundbar speakers and video projectors; sound systems comprising remote controls, amplifiers, audio speakers, and components therefor; waterproof and splash proof audio speakers; microphones; audio recorders; tower audio speakers; tailgate audio speakers; turntables being record players; electronic receivers that communicate with cell phones, mobile phones, headphones, internet and computers; jukeboxes; retro home audio systems comprising turntables being record players, amplifiers and speakers” in Class 009.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
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 goods and/or 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.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). 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).
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
In the present case, applicant’s mark THE ART OF SOUND is similar to the registered mark ART+SOUND in sound, appearance, and connotation. First, when comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).
Overall, the marks have the same commercial impression.
Comparison of Goods
The goods and/or services of the parties need not be identical or even competitive 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
In the present case, applicant’s “earphones, headphones and ear buds” and “Audio speakers; Wireless indoor and outdoor speakers; Calculators; Cables, namely, audio cables, power cables and electric charging cables; Chargers, namely, battery chargers, battery chargers for computers and battery chargers for cell phones; Battery packs; Accessories for mobile phones, namely, battery chargers, mobile phone auxiliary cables and USB cables for mobile phones, audio cables, power cables and electric charging cables; Electrical adapters; Power supply connectors and adaptors for use with portable electronic devices; Electric cords; Wireless chargers; Harnesses specially adapted for holding electronic devices, namely, mobile phones; Cell phone mounts” are related to registrant’s “wireless headphones; wireless headsets for cellular or mobile phones; wireless indoor and outdoor speakers; wireless speakerphones; wireless home audio speakers; wireless computer audio speakers; audio speakers for televisions; audio systems, namely, stereo receivers, stereo signal processors, amplifiers, and speakers; mobile phone and tablet computer accessories, namely, protective cases, electronic docking stations, stands adapted for mobile phones and tablet computers, audio speakers, headphones, battery chargers, electric cables, screen protectors comprised of plastic, acrylic and glass adapted for use with portable electronic devices, excluding gaming apparatus, stylus for computers, tablet computers and mobile phones, battery packs, lenses for cameras incorporated in mobile electronic devices, and protective skins in the nature of fitted plastic skins for covering and protecting mobile phones and tablet computers; DJ audio speakers, DJ equipment, namely, turntables being record players, audio recorders, audio amplifiers, microphones and audio speakers; novelty speakers; home theater systems comprising remotes controls, DVD players, audio amplifiers audio speakers, soundbar speakers and video projectors; sound systems comprising remote controls, amplifiers, audio speakers, and components therefor; waterproof and splash proof audio speakers; microphones; audio recorders; tower audio speakers; tailgate audio speakers; turntables being record players; electronic receivers that communicate with cell phones, mobile phones, headphones, internet and computers; jukeboxes; retro home audio systems comprising turntables being record players, amplifiers and speakers” because the goods are the type sold to consumers seeking audio equipment and cellular phone accessories. Specifically, both applicant and registrant have identified various types of headphones and speakerphones. Next, both applicant and registrant have identified speakers, cables, and chargers as types of electrical or cellular phone goods.
Accordingly, the goods and/or services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods and/or services originate from the same source.
Since the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of the applicant’s goods and/or services. Therefore, applicant’s mark is not entitled to registration.
PROCEDURAL ISSUE
Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “SOUND” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
SOUND is defined as:
a. Vibrations transmitted through an elastic solid or a liquid or gas, with frequencies in the approximate range of 20 to 20,000 hertz, capable of being detected by human organs of hearing.
b. Transmitted vibrations of any frequency.
c. The sensation stimulated in the organs of hearing by such vibrations in the air or other medium.
Please see the attached definitions.
Therefore, the term SOUND merely describes a feature of the applicant’s goods in that the various speakers, audio equipment, and electronic goods are used to transmit vibrations of a frequency that can be heard by people.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SOUND” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
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.
How to respond. Click to file a response to this nonfinal Office action
/mvaghani/
Mayur Vaghani
Examining Attorney
Law Office 124
Phone: (571) 272-1615
Fax: (571) 273-9102
mayur.vaghani@uspto.gov
RESPONSE GUIDANCE