United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88413179
Mark: PRESENCE
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Correspondence Address: SHEPPARD MULLIN RICHTER & HAMPTON LLP
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Applicant: People Power Company
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Reference/Docket No. 29RL-167110
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 17, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
Section 2(d) Refusal – Likelihood of Confusion
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 the present case, the applied-for mark is PRESENCE in standard characters for use with:
The registered mark is NETATMO PRESENCE in stylized font for use with:
COMPARISON 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).
Here, the applied-for mark is PRESENCE in standard characters.
The registered mark is NETATMO PRESENCE in stylized font.
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS AND SERVICES
The compared goods and services 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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)); TMEP §1207.01(a)(i).
Determining likelihood of confusion is based on the description of the goods and 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)).
Here, the applied-for mark is for use with:
The registered mark is for use with:
Applicant and registrant both provide monitoring, sensing, and detection goods and services. Additionally, the attached Internet evidence establishes that the same entity commonly produces the relevant goods and services and markets the goods and services under the same mark. See the attached evidence from Ring, ADT, Nest, and Simplisafe. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, applicant’s and registrant’s goods and services are related.
Because the marks are the confusingly similar and the goods and services are related, there is a likelihood of confusion and registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, quality, characteristic, purpose, function and use of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc. , 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc. , 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC- DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, the applied-for mark is PRESENCE in standard characters for use with various goods and software services, a complete list of which is reproduced above. For example, the goods and services in the application “remotely detect motion, and to record, view and stream images” and are also used “for motion detection, for monitoring entry and exit from houses and facilities, and for security purposes for use by caregivers caring for patients and seniors”. Applicant also provides “home access control and alarm monitoring systems” and related sensors.
Presence is a state of being there or at a location. See http://www.collinsdictionary.com/dictionary/english/presence; http://www.collinsdictionary.com/dictionary/english/present. The attached evidence demonstrates that the goods and services in the application are used to detect the presence of motion, people, environmental hazards, and related issues for home safety. See http://www.homedepot.com/p/Klein-Tools-Combustible-Gas-Leak-Detector-ET120/303184519; http://www.protectyourhome.com/home-security-equipment/heat-sensing-smoke-detector; http://www.protectyourhome.com/home-security-equipment/wireless-flood-detector; http://www.protectamerica.com/home-security-blog/tech-tips/motion-detector-vs-presence-detector-pros-and-cons_20670; http://www.vivint.com/resources/article/how-do-motion-detectors-work-home; http://www.femoransecurity.com/how-does-a-motion-detector-work/. Thus, the wording PRESENCE in the mark merely describes a feature, function, purpose, and use of applicant’s goods and services.
Therefore, the applied-for mark is merely descriptive of a feature, characteristic, purpose, function and use of applicant’s goods and services, and registration is refused.
ADVISORY OF Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant should note that an amendment to the Supplemental Register may not overcome the Section 2(d) Refusal detailed above.
Request for Information
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
1. What is the significance of the wording in the mark?
2. Do applicant’s goods and services detect physical presence?
3. Do applicant’s goods and services detect the presence of environmental conditions, such as heat, temperature, smoke, fire, carbon monoxide, etc.?
4. Do applicant’s software goods and services detect the presence of motion, people, pets, etc.?
5. Do applicant’s electronic goods, sensors and devices detect the presence of motion, people, pets, etc.?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Amendments to Identifications of Goods and Services Required
Software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software. For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual. As such, the identifications must clearly indicate the downloadable and/or non-downloadable natures of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).
Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services for “motion sensors” as shown below. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
The wording “devices” in the identification of “electric or electronic sensors and devices for motion, sound, humidity, temperature, water, light, smoke, carbon monoxide, and security monitoring” is indefinite and must be clarified to state the common commercial or generic name of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Similar to the above, the identification of “building security systems comprised of environmental hazard detectors, motion sensors, humidity sensors, temperature sensors, touch sensors, motion sensors, entry sensors, water sensors, smoke and fire alarm and carbon monoxide sensors, thermostats, and hardware and software for monitoring and controlling environmental and security devices” to state the common commercial or generic name of the following goods:
See the bold text below for acceptable options for the required amendments. Additionally, in International Class 9, the hardware must be identified as computer hardware and the downloadable nature of the software specified.
The wording “non-downloadable computer software and the hosting of software for use by others” in International Class 42 is indefinite for the following reasons.
First, services are provided in International Class 42, as opposed to goods. As such, applicant must amend the identification to specify the common commercial or generic name of the services, such as providing non-downloadable computer software and/or software as a service (SAAS) services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Second, similar to the above, the wording “the hosting of software for use by others” is unclear and must be amended to specify the common commercial or generic name of the services, such as software as a service (SAAS) services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See the bold text below.
Lastly, the identification must clearly indicate the function of the above two services. The USPTO requires specification of the purpose or function of the software in identifying software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). As such, the identification should specify that the two services provide the same functions. See the bold text below.
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.
Applicant may adopt the following wording, if accurate:
International Class 9: Downloadable computer software and
downloadable mobile application to monitor and control devices for environmental and security monitoring, namely, environmental hazard detectors, motion sensors, light sensors,
smoke and fire alarm and carbon monoxide sensors, humidity sensors, temperature sensors, touch sensors, motion sensors, entry sensors, water sensors, security cameras, and thermostats; downloadable
computer software and downloadable mobile application for use in enabling computers, smartphones and tablets to remotely detect motion, and to record, view and stream images and
video; downloadable computer software and downloadable mobile application used to permit interoperability between cameras in mobile devices; downloadable computer software and
downloadable mobile application for providing notifications to a user of motion and security detection through a mobile phone camera; downloadable computer software and
downloadable mobile application for monitoring and controlling smart devices in the home; electric or electronic sensors and devices for motion, sound, humidity, temperature,
water, light, smoke, carbon monoxide, and security monitoring, namely, motion detectors, motion sensors, temperature sensors, fire and smoke detectors, alarm sensors, and carbon
monoxide detectors; environmental hazard detectors, namely, devices in the nature of electric and electronic sensors to detect and record water, humidity levels, heat, temperature, smoke, fire,
carbon monoxide, movement, motion, and sound; building security systems comprised of environmental hazard detectors in the nature of fire and smoke detectors, motion sensors,
humidity sensors in the nature of coolant-temperature sensors, temperature sensors, touch sensors in the nature of motion detectors, motion sensors {Applicant may amend or remove this duplicate}, entry sensors in the nature of motion sensors, water sensors, smoke and fire alarm and
carbon monoxide sensors, thermostats, and computer hardware and downloadable software for monitoring and controlling environmental and security devices;
thermostats; electrical plugs; digital photo frames for displaying digital pictures; downloadable computer software and downloadable mobile applications for use in monitoring,
measuring, recording and controlling energy use and energy cost of residential appliances, consumer electronics devices and lighting systems for the purpose of improving energy efficiency;
downloadable computer software and downloadable mobile applications for monitoring, tracking, and automating home environments in connection with noise, light, and temperature
levels, for environmental hazards, for motion detection, for monitoring entry and exit from houses and facilities, and for security purposes for use by caregivers caring for patients and seniors;
home access control and alarm monitoring systems; downloadable computer software and downloadable mobile application for monitoring and controlling home access and alarm
monitoring systems
International Class 42: Software as a service
(SAAS) services featuring non-downloadable computer software and the hosting of said software for use by others to monitor and control devices for environmental and security
monitoring, namely, environmental hazard detectors, motion sensors, light sensors, smoke and fire alarm and carbon monoxide sensors, humidity sensors, temperature sensors, touch sensors, motion sensors {Applicant may amend or remove this duplicate}, entry sensors, water sensors, security cameras, and thermostats; Software as a service
(SAAS) services featuring non-downloadable computer software and the hosting of this software for others for use in monitoring, measuring, recording and controlling energy
use and energy cost of residential appliances, consumer electronics devices and lighting systems for the purpose of improving energy efficiency; Software as a service (SAAS)
services featuring non-downloadable computer software and the hosting of said software for others for monitoring, tracking, and automating home environments in connection
with noise, light, and temperature levels, for environmental hazards, for motion detection, for monitoring entry and exit from houses and facilities and for security purposes for use by caregivers
caring for patients and seniors; Software as a service (SAAS) services featuring non-downloadable computer software and the hosting of said software for
use by others for monitoring and controlling home access and alarm monitoring systems; Software as a service (SAAS) services featuring non-downloadable computer software and the
hosting of this software for use by others for monitoring and controlling smart devices in the home
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
/Rebecca T. Caysido/
Examining Attorney
Trademark Law Office 123
(571) 270-0926
Rebecca.Caysido@USPTO.GOV
RESPONSE GUIDANCE
