To: | David Tropper (hess.ip@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88615305 - HOME PROTECT 360 - N/A |
Sent: | October 14, 2019 06:08:14 PM |
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 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88615305
Mark: HOME PROTECT 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 14, 2019
Introduction:
Likelihood of Confusion:
The applicant applied to register the mark: HOME PROTECT 360 for Burglar alarms; Safety sensors, namely, carbon monoxide detectors, smoke detectors, and combination carbon monoxide and smoke detectors; Alarm sensors; Carbon monoxide detectors; Electronic glass break detectors; Fire and smoke detectors; Leak detectors for plumbing; Liquid level sensors; Motion detectors; Passive infrared detectors; Smoke detectors; Temperature sensors in Int. Class 9.
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.
HOME PROTECT 360 vs. 360 and design
The applicant features the mark “HOME PROTECT 360” and the registrant features the mark “360 and design”. The marks in question both feature the same number 360. When applicant's mark, incorporating the registered mark, 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 mark 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 descriptive elements. They might think that applicant's mark identifies another line of the goods from the same provider 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.
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)).
Goods:
The applicant features burglar alarms; safety sensors, namely, carbon monoxide detectors, smoke detectors, and combination carbon monoxide and smoke detectors; alarm sensors; carbon monoxide detectors; electronic glass break detectors; fire and smoke detectors; leak detectors for plumbing; liquid level sensors; motion detectors; passive infrared detectors; smoke detectors; temperature sensors in Int. Class 9.
The registrant features network monitoring cameras for surveillance; intelligent cameras; electronic data recorders for automobiles; camcorders for automobiles, namely, camcorders for recording the real-time traffic status into audio and video files in the process of vehicle traveling; burglar, fire, smoke, and gas alarms for alarm monitoring system in Int. class 9. The parties both feature the same type of goods or goods which are related and used together.
Pending:
Information regarding pending Application Serial Nos. 87018916; 87020877; and 87537725 is/are enclosed. The effective filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
Descriptiveness refusal:
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes a feature and characteristic of the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).
The applicant applied to register the mark: HOME PROTECT 360 for Burglar alarms; Safety sensors, namely, carbon monoxide detectors, smoke detectors, and combination carbon monoxide and smoke detectors; Alarm sensors; Carbon monoxide detectors; Electronic glass break detectors; Fire and smoke detectors; Leak detectors for plumbing; Liquid level sensors; Motion detectors; Passive infrared detectors; Smoke detectors; Temperature sensors in Int. Class 9.
This mark immediately names a feature and characteristic of the goods, namely that the applicant features Burglar alarms; Safety sensors, namely, carbon monoxide detectors, smoke detectors, and combination carbon monoxide and smoke detectors; Alarm sensors; Carbon monoxide detectors; Electronic glass break detectors; Fire and smoke detectors; Leak detectors for plumbing; Liquid level sensors; Motion detectors; Passive infrared detectors; Smoke detectors; Temperature sensors with a 360 degree view or monitoring feature which provides or allows for home protection. The trademark examining attorney refers to the excerpted materials from the BING search engine in which 360 degrees cameras and evidence that “home protection” is what the goods are for. See attachments.
It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive. It is enough if the term describes one attribute of the goods/services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).
Advisory for ITU cases:
A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been filed. 37 C.F.R. §§2.47(d) and 2.75(b); TMEP §1102.03. When a Section 1(b) application is amended to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. §2.75(b); 37 C.F.R. §2.75(b); TMEP §§206.01 and 1102.03.
Although an amendment to the Supplemental Register would normally be an appropriate response to this/these refusal(s), such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§815.02, 816.02 and 1102.03.
If applicant files an amendment to allege use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
Benefits of Supplemental Registration:
Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
· The registrant may use the registration symbol ®;
· The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
· The registrant may bring suit for infringement in federal court; and
· The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Questions:
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