To: | ARM CANDY LLC (rosezena@rjpiercelaw.com) |
Subject: | U.S. Trademark Application Serial No. 88421603 - CELESTE - N/A |
Sent: | December 29, 2019 05:00:44 PM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88421603
Mark: CELESTE
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Correspondence Address: |
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Applicant: ARM CANDY LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 29, 2019
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.
This Office action is in response to applicant’s communication filed on December 27, 2019.
NEW ISSUE: REFUSAL TO REGISTER – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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.
The Marks are Identical
In the present case, applicant’s mark is CELESTE and the registrant’s mark is CELESTE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
In this case, the application includes downloadable and recorded software for social networking and the registration includes social networking services. The goods and services are related because they are used for social networking and interacting with online communities based on user preferences.
The attached Internet evidence, consisting of screen prints from http://twitter.com, http://www.tumblr.com, and http://www.snapchat.com, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Thus, applicant’s and the 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).
Given that the marks are identical and that the goods and services for social networking are related, there is a likelihood of confusion regarding the source of the indicated goods and services. Therefore, registration must be partially refused under Section 2(d) of the Trademark Act.
Partial Refusal – Options
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
AMENDED IDENTIFICATION OF GOODS REQUIRED
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The requirement for an acceptable identification of goods is continued and maintained. Upon further review, the wording “automated systems, namely, software, hardware and communications devices for planning, scheduling, controlling, monitoring and providing information on transportation assets and parts thereof” in the identification of goods for International Class 9 is indefinite and must be clarified because it does not specify whether the software is downloadable or non-downloadable, and thus, could include goods/services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable and recorded software in class 9, and online non-downloadable software in class 42. This entry has been deleted from the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.
Applicant may substitute the following wording, if accurate:
INTERNATIONAL CLASS 9: Automated systems, namely, downloadable and recorded software, computer hardware and communications devices for planning, scheduling, controlling, monitoring and providing information on transportation assets and parts thereof; Computer hardware for communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks; Computer hardware for upload, storage, retrieval, download, transmission and delivery of digital content; Downloadable computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Global positioning system (GPS) consisting of computers, downloadable computer software, transmitters, receivers, and network interface devices; Mobile data receivers; Recorded database management software for social networking and interacting with online communities based on user preferences; Computer screen saver software, downloadable; Downloadable intelligent personal assistant software for social networking and interacting with online communities based on user preferences; Downloadable software development kits (SDK); Downloadable software for connecting to social networks via phones, laptops, and other mobile devices; Downloadable software for all mobile devices for use in connecting to social networks; Downloadable cloud-based software for social networking, discussing current events, and interacting with online communities based on user preferences; Downloadable communications software for connecting online communities based on user preferences; Downloadable computer software for application and database integration; Downloadable computer software for creating searchable databases of information and data; Downloadable computer software for manipulating digital audio information for use in audio media applications; Downloadable computer software for organizing and viewing digital images and photographs; Downloadable computer software for redistricting, namely, aggregating smaller geographical areas into multiple larger areas; Downloadable computer software for social networking, discussing current events, and interacting with online communities based on user preferences; Downloadable computer software, namely, software development tools for the creation of mobile internet applications and client interfaces; Downloadable computer application software for social networking, posting travel reviews, discussing entertainment events, namely, software for interacting with online communities based on user preferences; Downloadable graphical user interface software; Downloadable mobile applications for social networking and interacting with online communities based on user preferences; Downloadable VPN (virtual private network) operating software; Electronic software updates, namely, downloadable computer software and associated downloadable data files for updating computer software in the fields of social networking, discussing current events, and interacting with online communities, provided via computer and communication networks; Recorded computer application software for mobile phones, namely, software for social networking, discussing current events, and interacting online communities based on user preferences
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
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. 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.
How to respond. Click to file a response to this nonfinal Office action.
/Kathy de Jonge/
Trademark Examining Attorney
Law Office 107
(571) 272-9152
kathleen.dejonge@USPTO.gov (informal use only)
RESPONSE GUIDANCE