To: | SmartEar, Inc. (thomas.ewing@awa.com) |
Subject: | U.S. Trademark Application Serial No. 88619102 - SMARTEAR - 31044240 |
Sent: | December 23, 2019 06:08:18 PM |
Sent As: | ecom107@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88619102
Mark: SMARTEAR
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Correspondence Address: |
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Applicant: SmartEar, Inc.
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Reference/Docket No. 31044240
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: December 23, 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.
SUMMARY OF ISSUES
· Section 2(d) Refusal – Likelihood of Confusion
· Prior-Filed Pending Applications
· Identification of Goods
· Multiple-Class Application Requirements
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(s) No. 4476280 (EARSMART). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
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.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The applicant’s mark, “SMARTEAR” is likely to be confused with the registered mark, “EARSMART”.
In this case, both applicant’s and registrant’s marks convey the impression of something which is electronic or “smart” used with the ears.
Taken together, the marks are confusingly similar.
Comparing the Goods and Services
The applicant’s goods and/or services are “Wireless multifunctional in-ear earplug, earphone, headphone, or headset device for transmission, recording, or presentation of data, such as audio data used to provide personalized audio for a device user; personalized in-ear earplugs, earphones, headphones, headset devices for use with sound receipt and transmission systems; computer software for managing information regarding transmission, recording, or presentation of data in an in-ear earplug, earphone, headphone, headset devices; mobile data communications devices all in the nature of portable digital electronic devices for controlling and personalizing audio, such as focusing on hearing augmentation, health, optimization and enhancement,” in Class 9. See application.
The registrant’s goods and/or services are “Wireless telecommunications devices, namely, mobile telephones, wireless phones, internet phones, video phones, two-way radios, and handheld electronic digital devices for use in reproducing, transmitting, receiving and playing audio signals, files and sounds, and visual signals, files and images; digital signal processors; computer hardware and software used for the control of voice controlled information and communication systems and devices; computer hardware; computer software for use in communications, namely, computer software used to digitally process and enhance the recording and playback of audio sound, computer software used for transmitting, reproducing, editing, or receiving of sound, and computer software used for use in creating, viewing and playing sound; electronic circuits; integrated circuits; personal digital assistants; tablet computers; handheld computers; wireless computers; audio and video equipment, namely, audio/visual receivers, music and media players and recorders, handheld and portable electronic devices for playing and recording audio and visual materials; communications systems and equipment, namely, telephones, internet phones, and video phones; portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating and reviewing text, data, image and audio files; consumer electronics, namely, portable music and media players; personal connectivity products that enable wireless streaming of audio files and other communications through audio and video equipment based upon wireless personal area network standards and short range wireless protocols, namely, telecommunications transmitters and receivers, and audio speakers,” in Class 9. See attached registration(s).
In this case, both applicant and registrant provide wireless devices for sound transmission and computer software for sound and data transmission.
The attached Internet evidence consists of screenshots from the websites identified below. This evidence establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark and in the same general channels of trade. Therefore, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In this case, the marks are confusingly similar and the goods of the parties are related as to nature and/or channels of trade. Therefore, upon encountering these marks and goods in commerce, consumers are likely to be confused and mistakenly believe that the goods emanate from a common source. Accordingly, the applicant’s proposed mark is refused for likelihood of confusion under Trademark Act Section 2(d).
PRIOR-FILED PENDING APPLICATIONS
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 marks in the referenced applications. 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.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Several entries in the identification of goods are overbroad (including goods or services in multiple classes) and/or indefinite (ambiguous as to the specificity of the product), and require further clarification. The original language of applicant’s identification is listed in the left column, the particular issue in the middle, and the Examining Attorney’s suggested language for amending the identification to comply with the degree of particularity required is listed in the right hand column.
Original Wording |
Reason Unacceptable |
Suggested Wording |
Wireless multifunctional in-ear earplug, earphone, headphone, or headset device for transmission, recording, or presentation of data, such as audio data used to provide personalized audio for a device user |
The wording “or” is not acceptable. Applicant must explicitly identify the specific goods provided in a definite manner. Applicant must also clarify whether these are medical hearing aid devices or if these are non-medical in nature. The wording “such as” is also indefinite and should be amended to clearly specify the goods’ function. |
[Class 9] Wireless multifunctional in-ear earplug, earphone, headphone, or headset device for transmission, recording, or presentation of data in the nature of audio data used to provide personalized audio for a device user, not for medical use; [Class 10] hearing aids in the form of Wireless multifunctional in-ear earplug, earphone, headphone, or headset device for transmission, recording, or presentation of data in the nature of audio data used to provide personalized audio for a device user |
personalized in-ear earplugs, earphones, headphones, headset devices for use with sound receipt and transmission systems |
Applicant must clarify whether these are medical hearing aid devices or if these are non-medical devices |
[Class 9] personalized in-ear earplugs, earphones, headphones, headset devices for use with sound receipt and transmission systems, not for medical use; [Class 10] hearing aids in the form of personalized in-ear earplugs, earphones, headphones, headset devices for use with sound receipt and transmission systems |
computer software for managing information regarding transmission, recording, or presentation of data in an in-ear earplug, earphone, headphone, headset devices |
Applicant must clarify whether this is downloadable, pre-recorded, or online, non-downloadable software provided to the user via the internet to ensure proper classification |
[Class 9] downloadable computer software for managing information regarding transmission, recording, or presentation of data in an in-ear earplug, earphone, headphone, and headset devices; [Class 42] providing online temporary use of non-downloadable software for transmitting, recording, or presenting data in-ear earplug, earphone, headphone, and headset devices |
mobile data communications devices all in the nature of portable digital electronic devices for controlling and personalizing audio, such as focusing on hearing augmentation, health, optimization and enhancement |
This wording is indefinite and too broad and must be amended to clarify the nature of the goods, as “such as focusing on” is vaguely worded and this wording could encompass both non-medical and medical devices. Applicant must also more clearly identify the nature of the devices, as these could be software chips or headsets. |
[Class 9] Portable digital headsets enabling users to modify sound inputs; [Class 10] digital hearing aids for the purpose of hearing ability enhancement |
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
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 3 classes; however, applicant submitted a fee(s) sufficient for only 1 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 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.
Diane Collopy
/Diane Collopy/
Trademark Examining Attorney
Law Office 107
diane.collopy@uspto.gov
(571) 270-3118 (informal communication only)
RESPONSE GUIDANCE