To: | Oakmont Capital (trademark@ecjlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88430227 - HELIO - 16628-1 |
Sent: | July 30, 2019 11:59:19 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88430227
Mark: HELIO
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Correspondence Address:
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Applicant: Oakmont Capital
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Reference/Docket No. 16628-1
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 30, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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. 4352174. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Comparison of Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark HELIO. Registrant’s mark is HELIOSMART.
Applicant’s mark is entirely encompassed within registrant’s mark. Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a similar commercial impression of something to do with the sun.
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Services
The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared 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 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).
In the present case, applicant has applied for the mark for use in connection with:
Class 36: Real estate services, namely, marketing, promoting, leasing and managing residential, retail, and co-working spaces in multi-unit properties
Registrant has registered the cited mark for use in connection with:
Class 35: Advertising; business management; business administration; office functions; business administration consultancy; computerized file management, especially relating to the production, distribution and use of energy; business management assistance; business management consulting; business information; presentation of goods on communication media, for retail purposes; employment agencies; commercial information and advice for consumers, especially regarding the production, distribution and use of energy; demonstration of goods; commercial or industrial management assistance; compilation of information into computer databases; systemization of information into computer databases; data search in computer files for others, namely, business advisory services, namely, search for and selection of the best potential suppliers for others; bookkeeping; marketing studies; project management assistance for others for business purposes in the fields of architecture, interior design, urban planning design, especially with regard to the production, distribution and use of energy; administrative management and commercial administration of solar parks for producing energy; administrative processing of purchase orders; searches for sponsorship; brokerage of contracts for the storage of gases and liquids, in particular the underground storage of natural gas, for third parties; consulting services for businesses and organizations in the field of business management of companies in the energy sector; procurement services for others in the field of transport and supply of energy, in particular the transport and supply of natural gas and electricity; these services do not relate to food
Class 36: Insurance underwriting for all types of insurance; financial affairs and monetary affairs, namely, financial information, management and analysis services; real estate agencies; financing services; financing and consulting on the financing of projects; financing and consulting on the financing of projects relating to renewable energies; capital investments; investing capital in energy saving and protecting the environment; fund investments; consulting on financial sponsorship
The attached internet evidence from In Motion, McEnearney, and Cohn shows that the same source that offers advertising services and real estate agency services like the services listed by registrant commonly also offers promotion of property, marketing of property, management of property, and other services like those identified by applicant under the same mark. http://www.inmotionmm.com/real-estate-advertising-solutions/; http://www.mcenearney.com/services/; http://cohnmarketing.com/real-estate/; http://cohnmarketing.com/capabilities/digital/.
Applicant and registrant’s services are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's services are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the services of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with a registered mark, and registration is properly refused on the Principal Register under Section 2(d).
AMENDMENT TO IDENTIFICATION OF SERVICES REQUIRED
Applicant may adopt the following identification, if accurate (changes indicated in bold and strikethrough):
Class 35: Real estate services, namely, marketing and promoting residential, retail, and co-working spaces in multi-unit properties of others
Class 36: Real estate services, namely, marketing, promoting, leasing and managing residential, retail, and co-working spaces in multi-unit
properties of others
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 services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 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.
ASSISTANCE
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
Robert N. Guliano
/Robert N. Guliano/
Examining Attorney
Law Office 105
571-272-0174
robert.guliano@uspto.gov
RESPONSE GUIDANCE