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:  October 14, 2019

 

Introduction:

 

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.

 

SUMMARY OF ISSUES:

 

• Likelihood of Confusion/Pending application;
• U.S. Attorney Bar Information.

Likelihood of Confusion:

The applicant applied to register the mark: 360-ALERT for Burglar alarms; Fire and smoke detectors; Alarm sensors; Carbon monoxide detectors; Electronic glass break detectors; Liquid level sensors; Motion detectors; Motion sensors; Passive infrared detectors; Safety sensors, namely, carbon monoxide detectors, smoke detectors, and combination carbon monoxide and smoke detectors; Smoke detectors; Temperature sensors in Int. Class 9.

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration Nos.:

 4674803 for 360, ALERT-360, LIFE-SAFETY TECHNOLOGY for computer application software for smartphones, biofeedback devices, computer servers, and other mobile devices, namely, software for transmitting alerts, alert notifications, and messages and receiving the same within a computer network in Int. class 9;

4969404 for ALERT 360 BY CENTRAL SECURITY GROUP for installation, repair and maintenance of security alarm systems, namely, intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment in Int. class 37; electronic transmission of messages and data by means of wireless services and wireline services through a global computer information network, namely, transfer of information and user defined data related to the management and monitoring of commercial and residential security alarm systems and property automation systems, namely, intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment, lighting, appliances, sprinkler systems, power, heating, ventilation and air conditioning (HVAC), video cameras, smoke detectors, fire detectors, carbon monoxide detectors, flood detectors, temperature sensors, motion sensors, access sensors and entry sensors in Int. class 38; commercial and residential property automation services by means of wireless and wireline services via a global computer information network, namely, remote monitoring and control of lighting, appliances, power, heating, ventilation and air conditioning (HVAC), video cameras, flood detectors, temperature sensors, access sensors, entry sensors, smoke detectors, fire detectors, carbon monoxide detectors and motion sensors to ensure proper functioning in Int. class 42; Remote monitoring of security alarm systems, namely, intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment for security and safety purposes; Emergency response alarm monitoring services, namely, monitoring of intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment by a remote monitoring center for the dispatch of emergency public health and security services and notification to third parties for security and safety purposes in Int. class 45.

5216300 for ALERT 360 VIDEO for telecommunications services, namely, electronic, digital and wireless transmission of images, video and data from closed circuit television or surveillance cameras including by means of wired communication networks, wireless communication networks, the Internet, cellular communications and broadband communications; computer aided transmission of messages and images; streaming of video footage from security or surveillance cameras on the Internet; video transmission over digital networks for surveillance services; electronic data transmission services relating to encrypted video or data, or secure live streaming images or recordings from surveillance cameras; interactive delivery of video over digital networks from security or surveillance cameras in Int. class 38; and computer software as a service featuring software for the remote management of security cameras, surveillance cameras, security-related software, security-related hardware and security-related equipment; computer software as a service featuring software for the remote management, operation, viewing, redundant recording utilizing Secure Digital (SD) memory card and the cloud, observation and controlling of security cameras, surveillance cameras, security systems, and encrypted video security footage; services to visually connect users to their home, business or other locations, including multiple location access, namely, software as a service featuring software for users to access secure live video streaming from cameras to computers and mobile devices and access vision analytics, secure cloud video recording services, and video care monitoring; cloud computing featuring software for use in receiving, organizing, screening, editing, recording, storing, analyzing, distributing and sharing digital video and still images from remote cameras, transmitting video and still images to digital devices and servers, and tamper detection and notification functions for security and camera-health monitoring purposes; cloud computing featuring software for use in operating digital video cameras and sensor camera monitoring systems and secure cloud video recording services hosted in multiple secure data centers and local storage via a Secure Digital (SD) memory card in Int. class 42.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

Similarities in Appearance, Sound, Connotation and Commercial Impression:

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.

 

360-ALERT vs. 360, ALERT-360 LIFE-SAFETY TECHNOLOGY; ALERT 360 BY CENTRAL SECURITY GROUP; ALERT 360 VIDEO

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

The applicant features the mark 360-ALERT and the registrant features the marks 360, ALERT-360, LIFE-SAFETY TECHNOLOGY; ALERT 360 BY CENTRAL SECURITY GROUP; ALERT 360 VIDEO (same owner). These marks all feature the very similar portion of 360-ALERT or ALERT 360.  The dominant or brand identifier is very similar in these marks.

 

Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).

 

The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

When applicant's mark, incorporating the registered mark, is used in connection with the identical or similar goods/services confusion is plainly likely. Prospective purchasers and users of such products and services who are familiar with the registered mark in connection with these goods and services and who are then presented with applicant's mark, which incorporates what is essentially the same mark into the name are likely to understand or interpret applicant's mark as an indication that it also comes from the same source as only bearing the additional element(s). They might think that applicant's mark identifies another line of the goods and/or services from the same manufacturer/provider under the registered mark, or that applicant's mark is an updated or newer trademark/service mark which developed from or grew out of the previously registered mark, perhaps for a new or different product/service line, but such people are clearly likely to assume some association or connection between the goods/services bearing the same marks.

Goods/Services:

The applicant features Burglar alarms; Fire and smoke detectors; Alarm sensors; Carbon monoxide detectors; Electronic glass break detectors; Liquid level sensors; Motion detectors; Motion sensors; Passive infrared detectors; Safety sensors, namely, carbon monoxide detectors, smoke detectors, and combination carbon monoxide and smoke detectors; Smoke detectors; Temperature sensors in Int. Class 9.

The registrant features installation, repair and maintenance of security alarm systems, namely, intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment in Int. class 37; electronic transmission of messages and data by means of wireless services and wireline services through a global computer information network, namely, transfer of information and user defined data related to the management and monitoring of commercial and residential security alarm systems and property automation systems, namely, intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment, lighting, appliances, sprinkler systems, power, heating, ventilation and air conditioning (HVAC), video cameras, smoke detectors, fire detectors, carbon monoxide detectors, flood detectors, temperature sensors, motion sensors, access sensors and entry sensors in Int. class 38; commercial and residential property automation services by means of wireless and wireline services via a global computer information network, namely, remote monitoring and control of lighting, appliances, power, heating, ventilation and air conditioning (HVAC), video cameras, flood detectors, temperature sensors, access sensors, entry sensors, smoke detectors, fire detectors, carbon monoxide detectors and motion sensors to ensure proper functioning in Int. class 42; Remote monitoring of security alarm systems, namely, intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment for security and safety purposes; Emergency response alarm monitoring services, namely, monitoring of intrusion alarm equipment, fire alarm equipment, carbon monoxide alarm equipment, video surveillance equipment, and building access control equipment by a remote monitoring center for the dispatch of emergency public health and security services and notification to third parties for security and safety purposes in Int. class 45; streaming of video footage from security or surveillance cameras on the Internet; video transmission over digital networks for surveillance services; electronic data transmission services relating to encrypted video or data, or secure live streaming images or recordings from surveillance cameras; interactive delivery of video over digital networks from security or surveillance cameras in Int. class 38; and computer software as a service featuring software for the remote management of security cameras, surveillance cameras, security-related software, security-related hardware and security-related equipment; computer software as a service featuring software for the remote management, operation, viewing, redundant recording utilizing Secure Digital (SD) memory card and the cloud, observation and controlling of security cameras, surveillance cameras, security systems, and encrypted video security footage; services to visually connect users to their home, business or other locations, including multiple location access, namely, software as a service featuring software for users to access secure live video streaming from cameras to computers and mobile devices and access vision analytics, secure cloud video recording services, and video care monitoring; cloud computing featuring software for use in receiving, organizing, screening, editing, recording, storing, analyzing, distributing and sharing digital video and still images from remote cameras, transmitting video and still images to digital devices and servers, and tamper detection and notification functions for security and camera-health monitoring purposes; cloud computing featuring software for use in operating digital video cameras and sensor camera monitoring systems and secure cloud video recording services hosted in multiple secure data centers and local storage via a Secure Digital (SD) memory card in Int. class 42 and computer application software for smartphones, biofeedback devices, computer servers, and other mobile devices, namely, software for transmitting alerts, alert notifications, and messages and receiving the same within a computer network in Int. class 9.

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). The applicant and the registrant feature goods and services which are all related to security products, security maintenance and monitoring security. These goods and services can be used and purchased together.

The compared goods and/or 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 fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Pending:

 

Information regarding pending Application Serial Nos. 87925660; 87018916; 87537725 and 87020877 are enclosed.  The effective filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Other Informalities:

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

U.S. Attorney Bar Information:

 

Attorney bar information required.  Applicant's attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney's bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant's attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the "Attorney Information" page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney statement required.  Applicant's attorney must provide the following statement:  "I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory)."  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

Questions:

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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  

 

 

/ LDA/

Lourdes Ayala,

Attorney at Law

Law Office 106

Telephone Number 571-272-9316

Lourdes.Ayala@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 October 14, 2019 for

U.S. Trademark Application Serial No. 88517763

 

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. 

 

 

/ LDA/

Lourdes Ayala,

Attorney at Law

Law Office 106

Telephone Number 571-272-9316

Lourdes.Ayala@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 October 14, 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.”