United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88454741
Mark: RHAPSODY
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Correspondence Address: |
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Applicant: Telkonet, Inc.
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Reference/Docket No. N/A
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: August 28, 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.
Please also note that a prior-filed, pending application has been cited as a potential bar to registration.
1) Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4799973 and 5550071. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the attached registration information.
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.
Similarity of the Marks
A. Registration No. 4799973
Applicant’s mark is “RHAPSODY.”
The mark in Registration No. 4799973 is “WRAPSODY,” which is an obvious and intentional misspelling of “RHAPSODY.” Significantly, the marks appear very similar. They also have essentially the same commercial impression because they both call to mind “RHAPSODY.”
Even more significant is that the marks are phonetic equivalents. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
B. Registration No. 5550071
As noted above, applicant’s mark is “RHAPSODY.” The mark in Registration No. 5550071 is “iRhapsody” and design.
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)).
In this case, consumers would use the wording in the marks to call for the relevant goods and/or services. Here, the registered mark contains the entirety of applicant’s mark. In fact, the wording in the marks differ only in that the registered mark contains an extra “i.” Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Significantly, as a result of the shared/similar wording, the marks, as a whole, appear and sound similar. They also create similar overall commercial impressions with each calling to mind a “rhapsody.”
In light of the foregoing, it is likely that consumers would be confused as to the origin of applicant’s goods and/or services.
The Goods and/or Services are Related
A. Registration No. 4799973
The services in Registration No. 4799973 include the following: computer software development; design of computer software; maintenance of computer software; computer programming; rental of computers, computer software and web servers; customization of computer software; computer hardware and software consulting services; consulting in the field of information technology; design and development of computer networks and computer network software and applications.
In this case, applicant’s goods and services are as follows:
Commercial intelligent automation control systems, namely wireless devices, switches, outlets, gateways and sensors for internet of things (IoT) applications, intelligence for internet of things (IoT) enabled devices, and commercial automation controls, in Class 9.
Intelligent automation platform as a service (PAAS) featuring computer software for connecting, operating and managing a wide variety of networked commercial internet of things (IoT) devices for use in environmental control, energy management, facility optimization and data collection; Data automation and collection service using proprietary software to evaluate, analyze and collect service data from commercial intelligent automation systems; Custom design of intelligent automation computer software platforms for connecting, operating and managing a wide variety of networked commercial internet of things (IoT) devices for use in environmental control, energy management, facility optimization and data collection, in Class 42.
Determining likelihood of confusion is based on the description of the goods and/or 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)). When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
In this case, registrant’s services such as registrant’s computer software development and design services, computer programming services and services for the design and development of computer networks and computer network software and applications are very broadly identified. It is, therefore, presumed that registrant is 1) developing software that is identical to applicant’s software goods and the software featured in its services, and 2) providing services that are the same as applicant’s “custom design of intelligent automation computer software platforms for connecting, operating and managing a wide variety of networked commercial internet of things (IoT) devices for use in environmental control, energy management, facility optimization and data collection.” Thus, applicant’s and registrant’s goods/services are legally identical, in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
The attached Internet evidence establishes that many entities provide both software as well as related software services, all in the same field or trade channels. Therefore, applicant’s and registrant’s goods and/or 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).
The trademark examining attorney also has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, a variety of software and related services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Additionally, registrant’s goods and/or services have no restrictions as to nature, type, channels of trade, or classes of purchasers and are, therefore, “presumed to travel in the same channels of trade to the same class of purchasers” as are applicant’s goods/services In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
A. Registration No. 5550071
The goods in Registration No. 5550071 are as follows: armatures for use in electrical apparatus; connections, electric; electric relays; wire connectors.
Applicant’s goods in Class 9 include the following: commercial intelligent automation control systems, namely wireless devices, switches, outlets, gateways and sensors for internet of things (IoT) applications, intelligence for internet of things (IoT) enabled devices, and commercial automation controls, in Class 9.
In this case, applicant’s wireless devices, switches, outlets, gateways and sensors are broadly identified. It is, therefore, presumed that they include all such goods including all wireless device and including goods that could be identical to or related to registrant’s goods. For example, it is presumed that applicant’s switches encompass registrant’s electric relays (which are switches). Thus, the goods appear identical, at least in part.
To the extent the goods are not identical, it is presumed that they are highly related and used for similar purposes. In this regard, it is presumed that registrant’s goods include those for internet of things (IoT) applications, intelligence for internet of things (IoT) enabled devices, and commercial automation controls.
Moreover, registrant’s goods and/or services have no restrictions as to nature, type, channels of trade, or classes of purchasers and are, therefore, “presumed to travel in the same channels of trade to the same class of purchasers” as are applicant’s goods/services In re Viterra Inc., 671 F.3d at 1362, 101 USPQ2d at 1908.
Please Note: The refusal as to Registration No. 5550071 applies only to applicant’s goods specifically listed above.
Doubt is Resolved in Favor of Registrant
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Prior-filed, Pending 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.
2) Identification of Goods/Services
The identification of services in Class 42 is acceptable.
However, some of the wording in the Class 9 identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. More specifically, applicant must clarify the common commercial name or nature of each of the “wireless devices, switches, outlets, gateways and sensors.”
In addition, “for internet of things (IoT) applications, intelligence for internet of things (IoT) enabled devices, and commercial automation controls” must be clarified. While it is clear that “for internet of things (IoT) applications” relates back to the wording preceding it, it is not so clear that “intelligence for internet of things (IoT) enabled devices, and commercial automation controls” do so as well. That is particularly because commercial automation controls is referenced as the beginning and the end. Thus, clarification is required.
Applicant may substitute the following wording for Class 9, if accurate.
Commercial intelligent automation control systems, namely, wireless devices in the nature of ________ [specify common commercial name(s), e.g., receivers of electronic signals], electric switches, electrical outlets, gateway routers in the nature of computer control hardware, and electric sensors for internet of things (IoT) applications, for intelligence for internet of things (IoT) enabled devices, and for use in connection with commercial automation controls
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 Advisory
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
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
maureen.lott@uspto.gov
RESPONSE GUIDANCE