To: | New Sensor Corporation (mike@ehx.com) |
Subject: | U.S. Trademark Application Serial No. 88483045 - EHX SOUL CANS - EH SOUL CANS |
Sent: | September 13, 2019 12:51:16 PM |
Sent As: | ecom124@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88483045
Mark: EHX SOUL CANS
|
|
Correspondence Address:
|
|
Applicant: New Sensor Corporation
|
|
Reference/Docket No. EH SOUL CANS
Correspondence Email Address: |
|
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: September 13, 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.
This application was filed with the USPTO on June 21, 2019.
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is EHX SOUL CANS in standard characters for “Earphones; Earphones and headphones; Headphones; Audio headphones; Loudspeakers, headphones, microphones and CD players; Music headphones; Personal headphones for use with sound transmitting systems; Stereo headphones”.
Registrant’s mark for Registration No. 3805998 is SOUL in standard characters for “Portable mp3 players; portable digital audio CD players; compact disc players; computer peripherals; ear buds, namely, ear phones; headphones; speaker sets comprised of floor standing, book shelf, in wall, on wall, indoor and outdoor speakers, bar shaped audio speakers and subwoofers; HD radio with speaker system and back up battery; computer accessories, namely, computer speaker system comprised of multi-driver desktop speakers and subwoofers, cables, usb tv and notebook computer stand”.
Registrant’s mark for Registration No. 4289542 is S SOUL in stylized wording for “computer peripherals; ear buds, namely, ear phones; headphones”.
Registrant’s mark for Registration No. 4422085 is SOUL UNLIMITED in standard characters for “Audio headphones; Audio speaker enclosures; Audio speakers; Bass speakers; Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters; Earphones and headphones; Electric audio playback units with lights and speakers; Headphones; Loud speaker systems; Loud speakers; Music headphones; Personal headphones for sound transmitting apparatuses; Personal headphones for use with sound transmitting systems; Portable vibration speakers; Speaker enclosures; Speaker microphones; Stereo headphones; Wireless indoor and outdoor speakers”.
Registrant’s mark for Registration No. 5803338 is SOUL PLUS in standard characters for “Battery chargers; Ear phones; Protective covers for smartphones”.
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.
Comparison of Goods/Services
Applicant’s goods are “Earphones; Earphones and headphones; Headphones; Audio headphones; Loudspeakers, headphones, microphones and CD players; Music headphones; Personal headphones for use with sound transmitting systems; Stereo headphones”.
Registrant’s goods for Registration No. 3805998 are “Portable mp3 players; portable digital audio CD players; compact disc players; computer peripherals; ear buds, namely, ear phones; headphones; speaker sets comprised of floor standing, book shelf, in wall, on wall, indoor and outdoor speakers, bar shaped audio speakers and subwoofers; HD radio with speaker system and back up battery; computer accessories, namely, computer speaker system comprised of multi-driver desktop speakers and subwoofers, cables, usb tv and notebook computer stand”.
Registrant’s goods for Registration No. 4289542 are “computer peripherals; ear buds, namely, ear phones; headphones”.
Registrant’s goods for Registration No. 4422085 are “Audio headphones; Audio speaker enclosures; Audio speakers; Bass speakers; Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters; Earphones and headphones; Electric audio playback units with lights and speakers; Headphones; Loud speaker systems; Loud speakers; Music headphones; Personal headphones for sound transmitting apparatuses; Personal headphones for use with sound transmitting systems; Portable vibration speakers; Speaker enclosures; Speaker microphones; Stereo headphones; Wireless indoor and outdoor speakers”.
Registrant’s goods for Registration No. 5803338 are “Battery chargers; Ear phones; Protective covers for smartphones”.
All of the goods include various types of headphones, earphones and speakers. Therefore, the goods are closely related.
Comparison of 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).
Applicant’s mark is EHX SOUL CANS in standard characters. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Here, wording EHX is applicant’s house mark. Please see attached a copy of applicant’s prior Registration No. 4695842.
Further, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording CANS in the applied-for mark is merely descriptive of or generic for applicant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording SOUL the more dominant element of the mark.
Registrant’s mark for Registration No. 3805998 is SOUL in standard characters.
Registrant’s mark for Registration No. 4289542 is S SOUL in stylized wording.
Registrant’s mark for Registration No. 4422085 is SOUL UNLIMITED in standard characters.
Registrant’s mark for Registration No. 5803338 is SOUL PLUS in standard characters.
Therefore, consumers will be confused as to the source of the goods.
Disclaimer
In this case, applicant must disclaim the wording “CANS” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster’s Online Dictionary shows this wording means “headphone”. Thus, the wording merely describes applicant’s goods because it indicates the type of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CANS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Request for Information Regarding Goods
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
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. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c). Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
Janet Lee
/Janet H. Lee/
Trademark Examining Attorney
Law Office 124
Phone: (571) 272-1053
Email: janet.lee6@uspto.gov
RESPONSE GUIDANCE