To: | Physight Solutions LLC (trademarks@h35g.com) |
Subject: | U.S. Trademark Application Serial No. 88581797 - OWL - 80008-0011 |
Sent: | November 26, 2019 04:55:19 PM |
Sent As: | ecom128@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88581797
Mark: OWL
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Correspondence Address: HICKMAN PALERMO BECKER BINGHAM LLP 1 ALMADEN BOULEVARD - FLOOR 12
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Applicant: Physight Solutions LLC
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Reference/Docket No. 80008-0011
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: November 26, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION
The applied-for mark is OWL with a design element for use in connection with “Smart in-wall switch for use in detecting, measuring, monitoring, alerting and controlling air vibration, noise, atmospheric substances and properties on physical premises; Application software for controlling and programming in-wall switches for use in detecting, measuring, monitoring, alerting and controlling air vibration, noise, atmospheric substances and properties on physical premises; Subscription-based services for receiving customized alerts and notifications about user's physical premises safety status and conditions” in International Class 9. The registered marks are: (1) NITEOWL in standard characters (U.S. Registration No. 1894968) for use in connection with “electronic monitoring and security systems comprising control panels with keyboards, intruder sensors for doors and windows, smoke and fire sensors, power sensors, temperature sensors, motor contact sensors, a telephone communication module for transmitting alarms via telephone, for industrial plants” in International Class 9; and (2) WATCHOWL in standard characters (U.S. Registration No. 5023101) for use in connection with, in relevant part, “Telecommunication services, namely, providing electronic message alerts via the internet or other telecommunication networks notifying individuals of emergency or non-emergency situations involving protected persons or property” in International Class 38.
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 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).
Again, the applied-for mark is OWL with a design element. The registered marks are NITEOWL and WATCHOWL, both in standard characters.
In addition, 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)). Therefore, the additional design element in the applied-for mark cannot obviate the overall similarity of the marks.
Therefore, the marks are considered similar for purposes of likelihood of confusion.
Similarity of the Goods and/or Services
Applicant’s goods and services are “Smart in-wall switch for use in detecting, measuring, monitoring, alerting and controlling air vibration, noise, atmospheric substances and properties on physical premises; Application software for controlling and programming in-wall switches for use in detecting, measuring, monitoring, alerting and controlling air vibration, noise, atmospheric substances and properties on physical premises; Subscription-based services for receiving customized alerts and notifications about user's physical premises safety status and conditions,” currently classified in International Class 9. See REQUIREMENT: IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES below. The registrants’ goods and services are: (1) “electronic monitoring and security systems comprising control panels with keyboards, intruder sensors for doors and windows, smoke and fire sensors, power sensors, temperature sensors, motor contact sensors, a telephone communication module for transmitting alarms via telephone, for industrial plants” in International Class 9 (U.S. Registration No. 1894968); and (2) “Telecommunication services, namely, providing electronic message alerts via the internet or other telecommunication networks notifying individuals of emergency or non-emergency situations involving protected persons or property” in International Class 38 (U.S. Registration No. 5023101).
Furthermore, with respect to applicant’s services and the services in U.S. Registration No. 5023101, applicant’s broader identification of services essentially encompasses registrant’s narrower services. 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)).
In this case, the application uses broad wording to describe “Subscription-based services for receiving customized alerts and notifications about user's physical premises safety status and conditions,” which presumably encompasses all services of the type described, including registrant’s more narrow “Telecommunication services, namely, providing electronic message alerts via the internet or other telecommunication networks notifying individuals of emergency or non-emergency situations involving protected persons or property.” 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). Essentially, as applicant’s broad identification of services declines to specify the means by which the alerts and notifications are delivered, applicant’s services could include the telecommunications services identified in the cited registration. Thus, applicant’s and registrant’s services 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 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 services are related.
Conclusion
Considering the above, the marks are confusingly similar and registration is refused pursuant to Trademark Act Section 2(d). Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
REQUIREMENT: IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Applicant may substitute the following wording, if accurate (with suggested amendments in bold and suggested deletions in strikethrough):
Class 9: Smart in-wall electric switches for use in detecting, measuring, monitoring, alerting and
controlling air vibration, noise, atmospheric substances and properties on physical premises; downloadable/recorded/downloadable and recorded [SELECT ONE] computer application
software for controlling and programming in-wall switches for use in detecting, measuring, monitoring, alerting and controlling air vibration, noise, atmospheric substances and properties on physical
premises; subscription-based services for receiving customized alerts and notifications about user’s physical premises safety status and conditions
Class 38: Telecommunications services, namely, providing subscription-based customized electronic message alerts and notifications via the internet about user’s physical premises’ safety status and conditions
Class 42:
Software as a service (SAAS) services featuring software for providing subscription-based services for receiving customized alerts and notifications about user’s physical premises’ safety
status and conditions
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.
Applicant should note the additional multiple-class application requirements detailed below.
REQUIREMENT: 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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Nathan C. Ranns/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 128
Phone: (571) 270-3776
Nathan.Ranns@uspto.gov
RESPONSE GUIDANCE