To: | Web Design and Management Limited Liabil ETC. (rpilloff@pilloffpassino.com) |
Subject: | U.S. Trademark Application Serial No. 88552176 - BECON - 244-001TM |
Sent: | October 30, 2019 10:02:43 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88552176
Mark: BECON
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Correspondence Address:
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Applicant: Web Design and Management Limited Liabil ETC.
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Reference/Docket No. 244-001TM
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5865262. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is BECON (composite mark) for Software (recorded programs); facilitating online social networking services, building social networking applications and enabling, upload, download, access and data management; software allowing uploading, accessing, putting online, displaying, marking, creating and updating personal websites, real-time online viewing (streaming), creating internet links, sharing electronic media or computer information and communication networks in International Class 9. Registrant’s mark is BECON (standard characters) for Software for managing building heating, temperature, and energy; Application for cellular phones, namely, software for building installation integration and management including energy, temperature and heating management in International Class 9.
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 the 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 applied-for mark is BECON (composite mark). The registered mark is BECON (standard characters).
The marks create an overall similar commercial impression because they are identical in sound. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Thus, the marks are confusingly similar because applicant’s mark BECON (composite mark) creates an overall similar commercial impression with the registered mark BECON (standard characters).
Similarity of the Goods & Services/Trade Channels
In this case, the application uses broad wording to describe the software, which presumably encompasses all goods of the type described, including registrant’s more narrow software goods. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods 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.
Accordingly, for these reasons, and for those more fully enumerated above, a likelihood of confusion exists between the applicant’s mark and the registrant’s mark, such that registration should be refused pursuant to Section 2(d).
IDENTIFICATION OF GOODS/SERVICES
International Class 9
Applicant’s identification of Software (recorded programs); facilitating online social networking services, building social networking applications and enabling, upload, download, access and data management; software allowing uploading, accessing, putting online, displaying, marking, creating and updating personal websites, real-time online viewing (streaming), creating internet links, sharing electronic media or computer information and communication networks in the identification of services for International Class 9 must be clarified because it is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
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).
International Class 35
Applicant’s identification of Sales promotion for others; online advertising on computer networks; organization of exhibitions for commercial or advertising purposes; business information; business inquiries; marketing, advertising and promotional services is acceptable as currently identified and classified in International Class 35.
However, applicant’s identification of presentation of goods on electronic communication media for retail purposes; commercial information and advice for consumers; sales promotion of goods and services for others via computer and communication networks must be amended because it is indefinite. Applicant must further enumerate the services being identified, as exemplified in the suggested amendments below. See TMEP §§1402.01, 1402.03.
International Class 42
Applicant’s identification of Providing search engines for the internet; creating and maintaining web sites for others; rental of computer software; maintenance of computer software; application service providers (ASP), namely hosting computer software applications for others is acceptable as currently identified and classified in International Class 42.
International Class 45
Applicant’s identification of Social networking services; information about social networking services in the identification of services for International Class 45 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass chat room services for social networking in International Class 38 and/or on-line social networking services in International Class 45.
Similarly, classification of information services is based on the subject matter of the information provided. TMEP §1402.11(b). Therefore, the classification of the informational services depends on the classification of the subject matter.
Suggested Amendments
Applicant may substitute the following wording, if accurate:
International Class 9: Downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use}; Downloadable computer software for enabling, uploading, downloading, and managing data; Downloadable computer software for allowing uploading, displaying, marking, creating and updating personal websites.
International Class 35: Sales promotion for others; Providing television home shopping services in the field of general consumer merchandise; online advertising on computer networks; Commercial information and advice for consumers in the choice of products and services; organization of exhibitions for commercial or advertising purposes; business information; business inquiries; marketing, advertising and promotional services; promoting the sale of goods and services of others by {specify means, e.g., awarding purchase points for credit card use, distributing coupons, conducting promotional contests, etc.}.
International Class 42: Providing search engines for the internet; creating and maintaining web sites for others; rental of computer software; maintenance of computer software; application service providers (ASP), namely hosting computer software applications for others.
International Class 45: On-line social networking services; Providing information in the field of on-line social networking services.
Advisory
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.
Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services. See Nice Classification, 11th ed., version 2019 (Nice 11-2019). Applications filed on or after January 1, 2019 must comply with this new version. See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version. See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09. If applicant chooses to comply with the new version, the entire identification must comply with this version. See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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
/Brittney Cogan/
Examining Attorney
Law Office 114
(571) 272-7973
brittney.cogan@uspto.gov
RESPONSE GUIDANCE