| To: | David Tropper (hess.ip@gmail.com) |
| Subject: | U.S. Trademark Application Serial No. 88615260 - SLIP ALERT 360 - N/A |
| Sent: | October 15, 2019 08:21:26 AM |
| Sent As: | ecom106@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 |
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. 88615260
Mark: SLIP ALERT 360
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Correspondence Address:
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Applicant: David Tropper
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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 15, 2019
Introduction:
Likelihood of Confusion:
The applicant applied to register the mark: SLIP ALERT 360 for electronic devices for assisting care giving for seniors or people needing assistance comprised of sensors for determining status of person and apparatus for sending electronic alerts to care givers in Int. Class 9.
U.S. Registration No. 5822243 for 360 and design for electronic wearable units for the wireless receipt, storage and transmission of data and messages; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; wearable monitors, namely, wearable video monitors, wearable touchscreen monitors; wearable activity trackers; apparatus for transmission of communication in Int. class 9 and;
U.S. Registration No. 5134800 for 360 for electronic monitors to measure, monitor, record, and transmit physiological and biometric data such as heart rate, pulse, body temperature, perspiration, blood pressure, sleep patterns, time, distance, pace, calories burned, and other fitness measurements, not for medical purposes in Int. class 9 and;
U.S. Registration No. 4674803 for ALERT-360, 360, LIFE-SAFETY TECHNOLOGY for computer application software for smartphones, biofeedback devices, computer servers, and other mobile devices, namely, software for transmitting alerts, alert notifications, and messages and receiving the same within a computer network in Int. class 9. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Similarities in Appearance, Sound, Connotation and Commercial Impression:
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.
In this case, the following factors are the most relevant: similarity of the marks as to the 360 portion, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
SLIP ALERT 360 vs. 360 and 360 and design, ALERT-360, 360 LIFE-SAFETY TECHNOLOGY and design
The applicant features the mark SLIP ALERT 360 and the registrants feature the marks 360; 360 and design; and ALERT-360, 360, LIFE-SAFETY TECHNOLOGY and design. Two of the marks feature 360 as the dominant portion of their marks and the third mark features ALERT-360 which covers a majority of the registrant’s mark. When applicant's mark, incorporating the registered marks, is used in connection with the identical or similar goods confusion is plainly likely. Prospective users of such products who are familiar with the registered marks in connection with these goods and who are then presented with applicant's mark, which incorporates what is essentially the same mark into the name are likely to understand or interpret applicant's mark as an indication that it also comes from the same source as only bearing the additional elements. They might think that applicant's mark identifies another line of the goods from the same providers under the registered mark, or that applicant's mark is an updated or newer trademark which developed from or grew out of the previously registered mark, perhaps for a new or different product line, but such people are clearly likely to assume some association or connection between the goods bearing the same marks.
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
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. 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)).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Goods:
The applicant features electronic devices for assisting care giving for seniors or people needing assistance comprised of sensors for determining status of person and apparatus for sending electronic alerts to care givers in Int. Class 9.
The registrants feature electronic wearable units for the wireless receipt, storage and transmission of data and messages; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; wearable monitors, namely, wearable video monitors, wearable touchscreen monitors; wearable activity trackers; and apparatus for transmission of communication in Int. class 9 and for electronic monitors to measure, monitor, record, and transmit physiological and biometric data such as heart rate, pulse, body temperature, perspiration, blood pressure, sleep patterns, time, distance, pace, calories burned, and other fitness measurements, not for medical purposes in Int. class 9; and computer application software for smartphones, biofeedback devices, computer servers, and other mobile devices, namely, software for transmitting alerts, alert notifications, and messages and receiving the same within a computer network in Int. class 9.
The registrant’s feature electronic wearable goods which transmit personal physical data, similar to the applicant’s goods, and related software that is used to transmit electronically recorded personal information via the devices. Where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). It appears that the goods in question are the same or highly related and used together to obtain a person’s personal data.
Pending Applications:
The filing date of pending U.S. Application Serial Nos. 87018916; 87020877; and 87537725 precedes applicant’s filing date. See attached referenced applications. 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 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.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Other Informalities:
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Disclaimer:
Applicant must disclaim the descriptive wording “SLIP ALERT” apart from the mark as shown because the applicant provides alerts or notifications of when a senior person slips or falls. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). See attached definitions.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “SLIP ALERT” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Failure to comply with a requirement to disclaim has been held to be a basis for refusal to register before the Act of 1946. See In re American Cyanamid & Chemical Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953); Ex parte Knomark Mfg. Co., Inc., 118 USPQ 182 (PO Ex. Ch. 1958). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for disclaimer made by the examining attorney. See In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
Information Requirement:
Applicant must specify what significance 360” has in the field, trade, industry. 37 C.F.R. §2.61(b). Please explain and provide information as to whether “360” has any meaning in relation to the goods. Do the goods feature a 360 degree or angle of the person being monitored?
To permit proper examination of the application, applicant must submit additional product information about the goods. See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested product information should include fact sheets, ingredients, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.
The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02. Merely stating that information about the goods/services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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
/ LDA/
Lourdes Ayala,
Attorney at Law
Law Office 106
Telephone Number 571-272-9316
Lourdes.Ayala@uspto.gov
RESPONSE GUIDANCE
