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 31, 2019

 

INTRODUCTION

 

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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Application
• Identification of Goods and Services

 

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. 4878491 for "HI" & Design.  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 goods and 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 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.

 

Applicant's mark is "HI" & Design for "downloadable software for communication between insurance companies and its customers; downloadable software for instant messaging; downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; downloadable chatbot software using artificial intelligence for customer support communications; downloadable software for uploading photos, note taking, and translating text into different languages; downloadable software for viewing information about and interacting with insurance companies; downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; software for customers to review their experience with insurance companies" in International Class 9 and "online non-downloadable software for communication between insurance companies and its customers; online non-downloadable software for instant messaging; online non-downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; online non-downloadable chatbot software using artificial intelligence for customer support communication; online non-downloadable software for uploading photos, note taking, and translating text into different languages; online non-downloadable software for viewing information about and interacting with insurance companies; online non-downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; online non-downloadable software for customers to review their experience with insurance companies" in International Class 42.

 

Already registered is the mark "HI" & Design for "computer application software for mobile phones, smartphones and tablet computers for remotely controlling wireless consumer electronics and home automation systems, for home monitoring and control of wired and wireless electronic devices, and for aggregating social network information in real time" in International Class 9.

 

Similarity of the Marks

 

The respective marks, "HI" & Design and "HI" & Design, are confusingly similar, as set forth below.

 

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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

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 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)).  In the present case, both applicant's and registrant's marks are composite marks containing one word and a similar design.  While the designs of speech or thought bubbles are highly similar, the word portions are identical, "HI".

 

Therefore, the marks are confusingly similar and create the same overall commercial impression.

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

Similarity of the Goods and Services

 

Applicant seeks registration of its mark for "downloadable software for communication between insurance companies and its customers; downloadable software for instant messaging; downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; downloadable chatbot software using artificial intelligence for customer support communications; downloadable software for uploading photos, note taking, and translating text into different languages; downloadable software for viewing information about and interacting with insurance companies; downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; software for customers to review their experience with insurance companies" and "online non-downloadable software for communication between insurance companies and its customers; online non-downloadable software for instant messaging; online non-downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; online non-downloadable chatbot software using artificial intelligence for customer support communication; online non-downloadable software for uploading photos, note taking, and translating text into different languages; online non-downloadable software for viewing information about and interacting with insurance companies; online non-downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; online non-downloadable software for customers to review their experience with insurance companies".

 

The goods identified in the cited registration are "computer application software for mobile phones, smartphones and tablet computers for remotely controlling wireless consumer electronics and home automation systems, for home monitoring and control of wired and wireless electronic devices, and for aggregating social network information in real time".

 

Applicant’s goods and services are closely related to registrant’s goods as set forth below.

 

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).

 

The evidence of record demonstrates that applicant's software for instant messaging, personal assistance, scheduling, appointment reminders, customer support communications, and note taking and registrant's software for controlling electronics and home automation are commonly offered together by home automation software manufacturers under the same mark and through the same trade channels to the same type of consumers.  Specifically, the attached Internet evidence consists of excerpted website printouts from home automation software manufacturers.  See attached excerpts from http://www.amazon.com/, http://store.google.com/, http://www.home-assistant.io/, and http://www.apple.com/.  For example, in the attached website from Amazon, the company offers software for controlling home electronic devices, instant messaging, personal assistance, appointment reminders, and note taking.  See attached website excerpt.  Similarly, Google provides a software for personal assistance, home automation, scheduling, appointment reminders, note taking, and instant messaging.  See attached website excerpts.  The attached Internet evidence, 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 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, upon encountering "HI" & Design used for "downloadable software for communication between insurance companies and its customers; downloadable software for instant messaging; downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; downloadable chatbot software using artificial intelligence for customer support communications; downloadable software for uploading photos, note taking, and translating text into different languages; downloadable software for viewing information about and interacting with insurance companies; downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; software for customers to review their experience with insurance companies" and "online non-downloadable software for communication between insurance companies and its customers; online non-downloadable software for instant messaging; online non-downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; online non-downloadable chatbot software using artificial intelligence for customer support communication; online non-downloadable software for uploading photos, note taking, and translating text into different languages; online non-downloadable software for viewing information about and interacting with insurance companies; online non-downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; online non-downloadable software for customers to review their experience with insurance companies", and "HI" & Design used for "computer application software for mobile phones, smartphones and tablet computers for remotely controlling wireless consumer electronics and home automation systems, for home monitoring and control of wired and wireless electronic devices, and for aggregating social network information in real time", consumers are likely to be confused as to the source of the goods and services.

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87279752 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Class 9:

 

The wording "software for customers to review their experience with insurance companies" in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable software in International Class 9 and non-downloadable software in International Class 42.

 

Class 42:

 

The wording "online non-downloadable software" in the identification of services is indefinite and must be clarified because the precise nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, this wording alone does not make clear that the software is a service being provided that would be classified in Class 42.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate, with suggested amendments in bold:

 

Class 9:            downloadable software for communication between insurance companies and its customers; downloadable software for instant messaging; downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; downloadable chatbot software using artificial intelligence for customer support communications; downloadable software for uploading photos, note taking, and translating text into different languages; downloadable software for viewing information about and interacting with insurance companies; downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; downloadable computer software for customers to review their experience with insurance companies

 

Class 42:          providing online non-downloadable software for communication between insurance companies and its customers; providing online non-downloadable software for instant messaging; providing online non-downloadable intelligent personal assistant software for voice recognition, natural language processing, and scheduling and appointment reminders; providing online non-downloadable chatbot software using artificial intelligence for customer support communication; providing online non-downloadable software for uploading photos, note taking, and translating text into different languages; providing online non-downloadable software for viewing information about and interacting with insurance companies; providing online non-downloadable software for managing insurance policies, administering insurance coverage, and processing insurance payments, claims and policies; providing online non-downloadable software for customers to review their experience with insurance companies

 

Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods 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 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.

 

RESPONSE GUIDELINES

 

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 and/or requirement 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.

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

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 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  

 

If applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

 

 

Matthew Howell

/Matthew Howell/

Examining Attorney

Trademark Law Office 123

(571)270-0992

matthew.howell@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 31, 2019 for

U.S. Trademark Application Serial No. 88430330

 

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. 

 

 

Matthew Howell

/Matthew Howell/

Examining Attorney

Trademark Law Office 123

(571)270-0992

matthew.howell@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 31, 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.”