United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88546107
Mark: OLIS
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Correspondence Address: 2801 ALASKAN WAY, SUITE 300, PIER 70
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Applicant: BluHaptics, Inc.
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Reference/Docket No. 572520-2100
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 30, 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.
POTENTIALLY CONFLICTING PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 88491419 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
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 mark in the referenced application. 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.
Applicant should note the following additional ground for refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant’s mark is “OLIS” for use with “Downloadable and preinstalled software and hardware in the field of robotics” in International Class 09, and “Engineering and consulting services to others in the field of robotics” in International Class 42.
The registrants’ marks are:
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.
Similarity 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).
The marks are similar in sound, appearance and meaning because of the common dominant wording “OLIS” in all of the marks.
The only difference between the marks is the addition of the “E” at the end of Registrant 2’s marks so that it is “OLISE”. This difference does not change the commercial impression of the marks.
With regards to Registrant 1, applicant’s mark is “OLIS” and Registrant 1’s mark is “OLIS”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
Here, the applicant’s mark is “OLIS” and Registrant 2’s mark is “OLISE”. Because these are not common words or wording that has a specific meaning there is not correct pronunciation of the marks. Therefore, it is impossible to predict how the public will pronounce the marks, therefore even with the addition of the “E” at the end of Registrant 2’s mark, the marks in question could clearly be pronounced the same. Thus the marks are confusingly similar.
Accordingly, the applicant’s mark and the registrants’ marks are considered similar for likelihood of confusion purposes.
Similarity of Goods and/or Services
The applicant’s goods and services, namely, software and hardware in the field of robotics, and engineering and consulting services in the field of robotics are closely related to Registrant 1’s goods and services, namely, software and services in the fields of banking and finance, and Registrant 2’s goods, namely, computer software and hardware, and apparatus in the fields of aeronautics, space, industry and transport because both are likely to involve the same channels of trade and the same classes of consumers.
For example, the attached evidence from the websites of PaymentsJournal, WallStreet.com, Business Insider, Digitalist Magazine and Built In showing the importance and integration of robotics in the fields of banking and finance including with financial and banking transactions. This evidence shows that robotics is “an essential component” that is “revolutionizing the way lots of banking and finance companies do business through robotic process automation” which primarily uses software for customer service, fraud detection, auditing, compliance and more. Robotic process automation has “been adopted across various industries to ease employee workloads while cutting costs – and banking is no exception.”
And the attached evidence from the websites of NASA, Stanford University, IEEE Spectrum, European Space Agency and McKinsey showing the significant ways that robotics has advanced the fields of space, aeronautics, industry and transport and its continued and more integrated role. Applicant’s website and provided specimen also demonstrates that applicant’s goods and services are used in the fields of space, aeronautics, industry and transport. Furthermore, Registrant 2’s identification of goods includes identical goods to those of the applicant’s, namely, computer hardware and software.
Thus, applicant’s and registrant’s goods and/or services are considered highly 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). Accordingly, registration is refused under Trademark Act Section 2(d) based on likelihood of confusion
IDENTIFICATION OF GOODS AND SERVICES
The goods and services are:
Class 09: Downloadable and preinstalled software and hardware in the field of robotics
Class 42: Engineering and consulting services to others in the field of robotics.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42. TMEP §1402.11(e).
Applicant may adopt the following wording, if accurate:
Class 09: Downloadable and preinstalled recorded software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.} in the field of robotics; computer hardware in the field of robotics.
Class 42: Engineering services for others in the field of robotics; computer technology consultation in the field of robotics.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Response guidelines. For this application to proceed, 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. 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
/Marta Stadeli/
Examining Attorney
Law Office 123
(571) 272-6747
marta.stadeli@uspto.gov
RESPONSE GUIDANCE