United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88489689
Mark: PEBBLE
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Correspondence Address: 1835 MARKET STREET, SUITE 1050
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Applicant: Sidewalk Labs Employees, LLC
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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: September 17, 2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applied-for mark is PEBBLE for “Wireless occupancy sensors; Wireless sensors for detecting and communicating data related to parking, driving, and curb space, including curb occupancy, vehicle speed, vehicle size and other vehicle characteristics; Mobile computing and operating platforms consisting of data transceivers, wireless networks and gateways for communicating with connected wireless sensors; Downloadable computer software for connecting, operating and managing networked wireless occupancy sensors and for providing information on wireless sensor deployments and operating data, reporting sensor-generated information and alerts, and for forecasting future occupancy data; Downloadable computer software for connecting, operating and managing networked telecommunication gateways that enable communication between the gateways and wireless sensors” in International Class 9 and “Providing temporary use of non-downloadable cloud-based software for connecting, operating and managing networked wireless occupancy sensors and for providing information on wireless sensor deployments and operating data, reporting sensor-generated information and alerts, and for forecasting future occupancy data; Providing temporary use of non-downloadable cloud-based software for connecting, operating and managing networked telecommunication gateways that enable communication between the gateways and wireless sensors” In International Class 42.
The registered marks is PEBBLES for “Providing a website featuring temporary use of non-downloadable software that allows users to create custom computer programs; computer software development” in International Class 42.
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.
Similarity of the 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).
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).
In this case, the marks create a substantially similar commercial impression because the marks are essentially identical. The registered mark is merely the plural, PEBBLES, of the applied-for mark, PEBBLE. Thus, the marks are nearly identical in terms of sound and appearance. And, the meaning of the marks is the same. That is, both marks reference small rocks.
For the forgoing reasons, the marks are confusingly similar.
Relatedness of the Goods and Services
Relatedness of Applicant’s Class 9 Goods to Registrant’s Services
In this case, applicant’s “wireless occupancy sensors,” and downloadable computer software such as software “for connecting, operating and managing networked wireless occupancy sensors and for providing information on wireless sensor deployments and operating data, reporting sensor-generated information and alerts, and for forecasting future occupancy data” are related to registrant’s non-downloadable software for creating computer programs. The attached Internet evidence from Arduino, Microsoft, Yost, and Lord Sensing establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. See http://www.arduino.cc/en/Main/Create; http://www.arduino.cc/; http://docs.microsoft.com/en-us/windows-hardware/drivers/sensors/introduction-to-the-sensor-and-location-platform-in-windows; http://www.microsoft.com/en-us/research/research-area/programming-languages-software-engineering/; http://yostlabs.com/contact/custom-solutions/; http://yostlabs.com/about/feature-advantages/gps-compromised-pedestrian-tracking/; http://www.microstrain.com/inertial/nodes. 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).
Relatedness of Applicant’s Class 42 Services to Registrant’s Services
Further, applicant’s temporary use software for “operating and managing networked wireless occupancy sensors and for providing information on wireless sensor deployments and operating data, reporting sensor-generated information and alerts, and for forecasting future occupancy data” and “operating and managing networked telecommunication gateways that enable communication between the gateways and wireless sensors” is related to registrant’s non-downloadable software for creating custom programs and software development services.
The attached Internet evidence from BSquare, Microsoft, and Lord Sensing establishes that the same entity commonly provides the relevant services and markets the services under the same mark. See http://www.bsquare.com/embedded-software/; http://www.bsquare.com/iot-services/; http://docs.microsoft.com/en-us/windows-hardware/drivers/sensors/introduction-to-the-sensor-and-location-platform-in-windows; http://www.microsoft.com/en-us/research/research-area/programming-languages-software-engineering/; http://www.microstrain.com/wireless/sdk; http://www.microstrain.com/software; 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).
For the forgoing reasons, the marks create substantially similar commercial impressions and the services are related such that they are likely to be encountered by the same consumers. Therefore, registration of the applied for mark is refused based on Section 2(d) of the Trademark Act.
PRIOR FILED APPLICATIONS ADVISORY
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 marks in the referenced applications. 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.
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
/Rebecca Eubank/
Rebecca Eubank
Examining Attorney
Law Office 116
571-270-5577
rebecca.eubank@uspto.gov
RESPONSE GUIDANCE
