To: | BluHaptics, Inc. (trademark@millernash.com) |
Subject: | U.S. Trademark Application Serial No. 88546107 - OLIS - 572520-2100 |
Sent: | February 03, 2020 07:19:06 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
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: |
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Applicant: BluHaptics, Inc.
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Reference/Docket No. 572520-2100
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: February 03, 2020
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending application(s) below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application(s) below was sent previously.
- U.S. Application Serial No(s). 88491419
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods and Services
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Refusal of registration because of a likelihood of confusion with the mark in U.S. Registration No. 4355873 (“OLISE”) is withdrawn.
The examining attorney has carefully considered the applicant’s response but is not persuaded. Arguments are briefly addressed below but will be addressed in detail in a Final Refusal.
In the present case, the marks are identical. Additionally, applicant seemingly acquiesces to the evidence previously provide showing the integration of robotics into the fields of banking and financing. However, applicant argues that banking and robotics are not commonly associated by the general consumer.
“‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).
Thus, applicant’s and registrant’s marks are identical and their goods and/or services are related.
For the reasons discussed above and in the previous Office Action dated October 30, 2019, the Section 2(d) refusal is maintained and continued.
IDENTIFICATION OF GOODS AND SERVICES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED IN CLASS 09
The goods and services are:
Class 09: Downloadable and preinstalled recorded software for manipulators and controllers in the field of robotics; computer hardware in the field of robotics
[ACCEPTABLE, NO CHANGE NEEDED] Class 42: Engineering services for others in the field of robotics; computer technology consultation 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).
Here applicant has amended the identification for software in Class 9 to specify the format and the field of use. However, “software for manipulators and controllers” does not specify the purpose or function of the software. The function should specify the purpose of the software in relation to the manipulators and controllers, such as “software for controlling manipulators and controllers”
Applicant may adopt the following wording, if accurate:
Class 09: Downloadable and preinstalled recorded software for {indicate the function or purpose of the software in relation to manipulators and controllers, e.g., controlling, calibrating, etc.} manipulators and controllers 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.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Marta Stadeli/
Examining Attorney
Law Office 123
(571) 272-6747
marta.stadeli@uspto.gov