To: | Sky Labs Inc. (bhkang@klauskang.com) |
Subject: | U.S. Trademark Application Serial No. 88523318 - CART - N/A |
Sent: | October 09, 2019 08:39:31 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88523318
Mark: CART
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Correspondence Address:
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Applicant: Sky Labs 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: October 09, 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.
SUMMARY OF ISSUES
· Refusal Under Section 2(d) – Likelihood of Confusion
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
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.
The Marks at Issue
In this case, the applicant’s mark is CART CARDIO-TRACKER for, “Data processing apparatus; Smart rings; Wearable computers in the nature of smartwatches; Wearable activity trackers; Wearable video display monitors; Apparatus for recording, transmission, processing and reproduction of sound, images or data; Biometric identification apparatus; Calculating machines and data-processing equipment; Central processing units for processing information, data, sound or images; Computer chipset for use in transmitting data to and from a central processing unit; Computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying data; Electric sensors; Memories for data processing equipment; Mobile computing and operating platforms consisting of data transceivers, wireless networks and gateways for collection and management of data; Motion sensors; Recorded computer programs for measuring biometric information; Recorded computer programs for measuring heart beat; Recorded computer programs for detecting atrial fibrillation; Recorded computer programs for measuring heart rate; Recorded computer software for measuring biometric information; Recorded computer software for measuring heart beat; Recorded computer software for detecting atrial fibrillation; Recorded computer software for measuring heart rate; Heart rate monitoring apparatus; Heartbeat measuring apparatus; Sensors for medical use to be worn by a human to gather human biometric data and also including smart rings sold as a unit; Sensors for medical use to be worn by a human to gather human biometric data and also including wearable computers sold as a unit; Sensors for medical use to be worn by a human to gather human biometric data and also including data processing devices sold as a unit; Sensors for medical use to be worn by a human to gather human biometric data and also including display monitors sold as a unit; Alarms and sensors to be worn on a person while exercising for the purpose of monitoring heart rate; Computerized medical recording and analysis apparatus for the diagnosis and treatment of arrhythmias; Medical diagnostic apparatus for testing atrial fibrillation; Medical diagnostic apparatus for testing arrhythmia; Medical diagnostic apparatus for testing heart failure; Medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; Medical apparatus and instruments for monitoring heart rate; Medical apparatus and instruments for monitoring heart beat; Medical apparatus and instruments for monitoring biometric information; Medical apparatus for preventing or reversing heart failure; Medical instrument for cardiovascular diagnostics.”
Registrant’s mark is CART for, “computer software for use in statistical analysis of data and user manuals sold therewith.”
Similarity of the Parties’ 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 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)). As such, it is the wording, and not the design or stylization of the mark, which creates the majority of the overall commercial impression in each mark.
In this case, the overall commercial impression of the applicant’s mark and the cited registered marks is similar because the wording CART creates the vast majority of the commercial impression in each mark and marks are identical in sound. Thus, while the overall commercial impression created by each mark may carry slight differences, these differences do not obviate a likelihood of confusion under Section 2(d).
Relatedness of the Parties’ Goods and/or Services
It should be noted that 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)). As such, the broad terms recited in registrant’s identification of goods
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” 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)). Thus, applicant’s and registrant’s goods and/or services are related.
RESPONSE GUIDELINES
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
/Alexander Mangubat/
Alexander Mangubat
Examining Attorney
Law Office 121
(571)270-3561
Alexander.Mangubat@uspto.gov
RESPONSE GUIDANCE