Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  July 18, 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(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues:

 

• Refusal – Likelihood of Confusion
• Prior pending application
• Identification and classification of goods and services
• Multiple class application requirements
• Foreign registration certificate

 

REFUSAL – LIKELIHOOD OF CONFUSION

 

This refusal is limited to the following classes: 9, 10 and 11.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5186165, 5253038 and 5437491.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  (Please see the attached registrations.)

 

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 and/or 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 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.

 

In this case, the applied-for mark is MODOO for:

 

• Downloadable computer application software for baby monitoring devices; scales; pedometers; videophones; battery charger; visual recordings and audiovisual recordings featuring animation; video baby monitor; audio books on a variety of subjects; slide projector
• Medical apparatus and instruments for monitoring the health of babies; teething ring; baby bottle nipples; blood pressure monitor; baby and infant pacifiers; bottles; breast pump; medical products, namely, cushions; corsets for medical purposes
• Air deodorizer; gas purification machines; ionizing apparatus for treatment of air or water; air purification equipment and machinery; air conditioning; air cooling and ventilation apparatus and instruments; air sterilizer; sterilizer for baby toys, clothing, books; water purification equipment and machinery

 

The registered marks are as follows:

 

U.S. Registration No. 5186165 - MODO-KING and design for goods that include  “Acoustic sound alarms; baby monitors; blank video cassettes; electric buzzers; electronic alarm for providing notice of bed-wetting; electronic apparatus for the remote control of industrial operations; electronic warning bells; headphones; rechargeable batteries; sound alarms; sound recorded magnetic cards, sheets and tapes; video baby monitors; video cassette recorders and players, compact disc players, digital audio tape recorders and players, electronic diaries; whistle alarms monitors”

 

U.S. Registration No. 5437491 - MODO-KING for “Baby bottle nipples; Baby bottles; Breast pumps; Feeding bottle teats; Feeding bottle valves; Feeding bottles; Teething rings; Pacifiers for babies”

 

Comparison of Marks

 

The marks convey similar commercial impressions in that they feature the similar wording MODO and MODOO.  Such wording differs by only one letter, in the form of the additional letter “O” at the end of MODOO in the applied-for mark.  This slight difference does not avoid confusion, as MODO and MODOO are similar in appearance.

 

The addition of the word KING to the registered marks does not avoid confusion because consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Lastly, the addition of the design elements to the mark in U.S. Registration No. 5186165 does not avoid confusion because, 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 goods and/or 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)).

 

 

Comparison of Goods

 

With respect to U.S. Registration No. 5186165, the goods are identical in part, with both parties featuring video baby monitors in their recitations.  In addition, the registrant’s goods include “baby monitors,” which perform the same function and encompasses “video baby monitor” in the applicant’s recitation.  Lastly, the goods are used together in that “Downloadable computer application software for baby monitoring devices” encompasses application software for all types of baby monitoring devices, including “video baby monitors” in the cited registration.

 

With respect to U.S. Registration No. 5437491, the goods are similar in that they are supplies for babies.  They are also identical in part, with both parties featuring teething rings, breast pumps, baby bottle nipples and baby pacifiers in their recitations.  Lastly, “bottles” in the application encompasses all types of bottles, including the more specific type featured in this registration – baby bottles. 

 

U.S. Registration No. 5253038 – MODUPOWER for goods that include “Electrostatic precipitators for cleaning air; electrostatic precipitators for cleaning gases; filters for industrial and household use, namely filters and filtering devices for air and gas conditioning; industrial treatment installations for air and gas purification; electrostatic air filters for domestic use and industrial installations; air filters for exhaust extractors being parts of household or industrial installations; filters for waste gas purification not for motors or engines”

 

Comparison of Marks

 

The marks convey similar commercial impressions in that MODOO and MODU are likely to be pronounced in a highly similar, if not identical manner, as DOO in the applied-for mark and DU in the registered mark are likely to sound the same.  The addition of the word POWER in the register mark does not avoid confusion because, as noted above, consumers a likely to focus on the first word in a mark.

 

Comparison of Goods

 

The goods are similar in that they include goods for use in purifying gas, such as “industrial treatment installations for air and gas purification” in the registration and “gas purification machines” in the application.  Likewise, the goods of the parties include those for use in cleaning air, such as “air sterilizer” in the application and “Electrostatic precipitators for cleaning air.”  (Please see attached dictionary evidence indicating that “If you sterilize a thing or a place, you make it completely clean and free from germs.”)

 

Because the goods are identical in part, similar or related, they are likely to be encountered by the same class of potential consumers.  Consumers who encounter similar marks for identical, similar or related goods are likely to be confused as to their source.  Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may present arguments in support of registration. 

 

PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88248961 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 88248961.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified because the nature of some of the goods and services remains unclear.  Applicant must clarify the italicized wording below in accordance with the bolded, underlined guidance provided.  In some instances, the unacceptable wording has been replaced with suggested acceptable wording, which has also been bolded and underlined.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, the service “charitable fundraising” is classified incorrectly.  Applicant must amend the application to add Class 36 and classify the services in this class, delete this wording, or delete another class, add Class 36 and classify the services in this class.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant may adopt the following identification, if such wording accurately identifies the goods and services for which applicant seeks registration: 

 

Class 9:

 

Downloadable computer application software for use in [specify function, e.g., operating] baby monitoring devices; scales; pedometers; videophones; battery charger; visual recordings and audiovisual recordings featuring animation; video baby monitor; non-fiction audio books on a variety of subjects; slide projector

 

Class 10:

 

Medical apparatus and instruments for monitoring the health of babies, namely, [specify apparatus and instruments, e.g., heart monitors]; teething ring; baby bottle nipples; blood pressure monitor; baby and infant pacifiers; baby bottles; breast pump; medical products, namely, [specify type of cushions, e.g., heating] cushions; corsets for medical purposes

 

Class 11:

 

Electric air deodorizer; gas purification machines; ionizing apparatus for treatment of air or water; air purification units; air conditioners; air cooling and ventilation apparatus and instruments, namely, [specify apparatus and instruments, e.g., ceiling fans]; air sterilizer; sterilizer for baby toys, clothing, books; water purification installations

 

Class 35:

 

Online advertising on a computer network; providing business information via a website; business management advisory services relating to franchising; provision of an online marketplace for buyers and sellers of goods and service; personnel recruitment; update and maintenance of data in computer database; retail or wholesale store services featuring medical supplies

 

Class 36 (added):

 

Charitable fundraising

Class 38:

 

Television broadcasting; providing internet chat rooms; computer-aided transmission of images and information; digital file transfer, namely, electronic transmission of digital files; video on-demand transmission; providing online forums for users to post, search, watch, share, critique, rate, and comment on messages, news, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and user-generated and non-user generated content; streaming of data; transmission of online greeting cards; satellite transmission; communication by computer terminal

 

Class 42:  CLASS 42 IS ACCEPTABLE.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 6 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

QUESTIONS REGARDING THIS OFFICE ACTION

 

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  

 

 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 18, 2019 for

U.S. Trademark Application Serial No. 88408771

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 18, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”