| To: | Hearing Help Express, Inc. (marc.marion@hearinghelp.com) |
| Subject: | U.S. Trademark Application Serial No. 88536567 - HEARINGHELP EXPRESS AN INTRICON - N/A |
| Sent: | October 22, 2019 09:49:27 AM |
| Sent As: | ecom115@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 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
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. 88536567
Mark: HEARING HELP EXPRESS AN INTRICON
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Correspondence Address:
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Applicant: Hearing Help Express, 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 22, 2019
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is HEARING HELP EXPRESS AN INTRICON COMPANY (in special form) for “batteries for use in hearing aids” in International Class 9; and “hearing aids” in International Class 10.
Registrant’s mark is INTRICON (in standard character form) for “wireless audio and data transmission devices, namely, radio receivers and radio transmitters and operating software for use therewith, sold separately and as a unit for use in the professional audio and telecommunication industries; miniature electronic components, namely, audio signal transmitters, receivers, amplifiers, microphones and electronic wire coils for use in portable audio communication, and medical software for adjusting patient hearing aid parameters; operating software for radio receivers and radio transmitters for use with hearing aids; operating software for use in hearing aids” in International Class 9; and “wireless audio and data transmission devices, namely, radio receivers and radio transmitters for use with hearing aids and operating software sold as a unit for use therewith in the hearing health industry; miniature electronic components specifically-adapted for use in hearing aids, namely, wireless transmitters, receivers, amplifiers, microphones and electric wire coils; hearing aid components and replacement parts therefor, namely, radio receivers and radio transmitters for use in hearing aids and replacement parts therefor” in International Class 10.
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 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. 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 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).
Therefore, applicant’s mark and registrant’ mark share the same commercial impression and are confusingly similar.
Comparison of Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of the goods. Therefore, applicant’s mark is refused registration under Section 2(d) of the Trademark Act.
Ownership of Cited Registration Advisory
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 3960395.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL
THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 9. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, applicant has submitted two pages of what appears to be a print catalog ordering form for a “Battery Club” for applicant’s “batteries for use in hearing aids” in International Class 9. The applied-for mark appears in the top left corner of the first page as well as in an inset in the second column of the second page. In this case, the specimen is not acceptable to show the applied-for mark in use in commerce in connection with “batteries for use in hearing aids” because a consumer viewing the specimen would likely associate the use of the mark with applicant’s “Battery Club” catalog ordering services for hearing aid batteries. It is not clear from the specimen that applicant is the manufacturer of batteries for use in hearing aids as the specimen informs consumers that “You select the battery brand you prefer and the size you need” and “All manufacturers use the same tab color system!” on the second page and the first page shows images from a number of battery brands, none of which use the applied-for mark on or near the battery packaging. The appearance of the applied-for mark in the inset in the second column of the second page reinforces the perception that the specimen is for catalog ordering services for hearing aid batteries and not the batteries themselves because the applied-for mark appears next to an image of several hearing aid models which suggests that the advertisement for hearing aids is for applicant’s line of hearing aids. In contrast, the applied-for mark does not appear near or on any of the images of batteries in their packaging.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
CLARIFICATION OF COLOR CLAIM AND DESCRIPTION OF MARK REQUIRED
Applicant must clarify the colors that are being claimed as a feature of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq. The drawing shows the mark in the colors light gray, slate blue, dark gray, green; however, the colors “gray, white, green” appear in the color claim while the colors “green light green and gray” appear in the description of the mark.
Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is. TMEP §807.07(a)(i)-(a)(ii), (c). Additionally, the colors in the drawing, color claim, and description must match. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
To clarify the colors in the mark, applicant may satisfy one of the following:
(1) Submit a new color drawing that shows the mark in the colors specified in the color claim or description. TMEP §807.07(c). However, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
(2) Submit an amended color claim and description that matches the colors in the drawing. Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If white represents background and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested if the white background is not claimed as a part of the mark:
Color claim: “The colors light gray, slate blue, dark gray, and green are claimed as a feature of the mark.”
Description: “The mark consists of three overlapping triangles with the triangle on the bottom in the color light gray, the middle right triangle in the color slate blue with the part of the middle right triangle that overlaps with the bottom triangle in the color dark gray, and the top left triangle in the color green. The three triangles point toward the stylized wording “HEARING HELP EXPRESS” with the wording “HEARING HELP” in dark gray and the wording “EXPRESS” in light gray. A dark gray horizontal line appears beneath the wording “HEARING HELP EXPRESS”. The stylized dark gray wording “AN INTRICON COMPANY” appears beneath “HEARING HELP”. All instances of the color white in the mark represent background and/or transparent areas only and are not a feature of the mark.”
Alternatively, if white is intended to be a part of the mark, then the following color claim and description are suggested:
Color claim: “The colors white, light gray, slate blue, dark gray, and green are claimed as a feature of the mark.”
Description: “The mark consists of three overlapping triangles with the triangle on the bottom in the color light gray, the middle right triangle in the color slate blue with the part of the middle right triangle that overlaps with the bottom triangle in the color dark gray, and the top left triangle in the color green. The three triangles point toward the stylized wording “HEARING HELP EXPRESS” with the wording “HEARING HELP” in dark gray and the wording “EXPRESS” in light gray. A dark gray horizontal line appears beneath the wording “HEARING HELP EXPRESS”. The stylized dark gray wording “AN INTRICON COMPANY” appears beneath “HEARING HELP”. All of the foregoing appears on a rectangular white background.”
For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “HEARING”, “EXPRESS”, and “COMPANY” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a feature or characteristic of applicant’s goods. 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). Terms that describe the provider of a product or service may also be merely descriptive of the product. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q). Further, business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Son’s” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998).
In this case, applicant’s goods are “batteries for use in hearing aids” in International Class 9 and “hearing aids” in International Class 10. Thus, the wording “HEARING” is clearly descriptive of a feature or characteristic of applicant’s goods. Additionally, the attached evidence from American Heritage Dictionary shows the wording “EXPRESS” means “of, relating to, or appropriate for rapid travel” and “by express delivery or transport.” Thus, the wording “EXPRESS” merely describes applicant’s goods because such goods presumably are intended to be sent to consumers by express delivery or transport. Further, the wording “COMPANY” presumably describe applicant’s business structure as being a part of a company called Intricon.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HEARING”, “EXPRESS”, and “COMPANY” 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.
TRADEMARK COUNSEL ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
For this application to proceed, applicant must explicitly address each refusal and 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. 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
/Pauline Ha/
Examining Attorney
Law Office 115
(571) 272-5005
pauline.ha@uspto.gov
RESPONSE GUIDANCE
