To: | Lumen Technologies, Inc. (dockmpls@merchantgould.com) |
Subject: | U.S. Trademark Application Serial No. 88642330 - LUMEN - 18269.7US01 |
Sent: | January 13, 2020 11:17:56 AM |
Sent As: | ecom119@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 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88642330
Mark: LUMEN
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Correspondence Address:
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Applicant: Lumen Technologies, Inc.
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Reference/Docket No. 18269.7US01
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: January 13, 2020
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
Applicant has applied to register LUMEN for “distributorship services in the field of optical and data center infrastructure; distributorship services in the field of equipment to build, connect, integrate, test and secure critical networks and data infrastructure; telecommunications network management services, namely, the administration of telecommunication systems and networks for others; advisory services relating to the installation of wireless networks and computer equipment; installation, maintenance and repair of telecommunications networking hardware; consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments; maintenance and repair of telecommunications networking hardware, apparatus, and instruments; integration, testing and support of wireless networks; integration, installation and testing of billing systems; telecommunications consultation; information about telecommunication; IP telecommunications services; rental (lease) of equipment for telecommunications; installation of computer software; installation and maintenance of internet access software; computer security consultancy; computer security threat analysis for protecting data; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; technical support services, namely, migration of data servers and database applications; telecommunications engineering consultancy; data security consultancy; internet security consultancy; computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; updating and maintaining computer software through patches; computer network configuration services; consulting in the field of configuration management for computer hardware and software; computer systems integration services; integration of computer systems and networks.” The registered marks are LUMIN for “computer security consultancy, namely, scanning, auditing, analyzing, measuring, and monitoring computer systems and networks for vulnerabilities, security threats, and other cybersecurity risks; maintenance of computer software relating to computer security and prevention of computer risks” and SUNRISE LUMEN for “distributorship services in the field of telecommunications featuring bundled cable television and internet connection services and computer software.”
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, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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.
Comparison 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).
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).
Applicant’s mark is nearly identical to that of Reg. No. 5927418, as it only differs by one vowel and is likely pronounced the same or nearly the same. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such 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).
Applicant’s mark makes a highly similar commercial impression to the other cited mark as the share the wording “LUMEN,” with registrant’s mark simply adding “SUNRISE.” Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Comparison of the Services
In this case, applicant’s various computer, data and internet security services and software maintenance services are legally identical to the computer security consultancy and maintenance of computer software relating to computer security and prevention of computer risks in Reg. No. 5927418; until further limited, applicant’s broadly identified telecommunications services, including rental (lease) of equipment for telecommunications and the administration of telecommunication systems and networks for others, are very closely related to the bundled cable television and internet connection services and computer software of Reg. No. 5699093 as applicant’s telecommunication equipment and systems could include cable television and/or internet access (whether for residential or commercial use). Applicant’s other IT, computing and telecommunications services are also very closely related to the two cited registrants’ services, as the attached examples from www.verizon.com, www.xfinity.com and www.comcast.com show major telecommunications companies which offer cable and internet bundles, cloud computing solutions, data/internet security software and services, network management and datacenter architecture services, and the like under one mark.
Here, because the marks are highly similar and the services are very closely related, if not identical or legally identical in part, registration is refused under Section 2(d).
POTENTIAL LIKELIHOOD OF CONFUSION WITH PENDING 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.
IDENTIFICATION OF CLASSES 037 AND 038 SERVICES
Applicant’s Class 035 and 042 services are acceptable as written.
Class 038: Applicant must clarify its “IP telecommunications services” by type, e.g., VOIP telecommunications services. The identification of services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the services. Lastly, as an advisory, the wording “information about telecommunication” has been deleted from the ID Manual in response to the 1/1/20 Nice Agreement change, and therefore, applicant may wish to amend its wording to “providing information in the field of telecommunications” in order to comply.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may adopt the following amended identification, if accurate:
· Distributorship services in the field of optical and data center infrastructure; distributorship services in the field of equipment to build, connect, integrate, test and secure critical networks and data infrastructure; telecommunications network management services, namely, the administration of telecommunication systems and networks for others [INT. CLASS 035]
· Advisory services relating to the installation of wireless networks and computer equipment; installation, maintenance and repair of telecommunications networking hardware; consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments; maintenance and repair of telecommunications networking hardware, apparatus, and instruments; technical support of wireless networks, namely, technical advice related to the installation and repair of wireless network hardware and troubleshooting in the nature of installation and repair of wireless network hardware; installation of computerized billing systems and billing systems networking hardware [INT. CLASS 037]
· Telecommunications consultation; providing information in the field of telecommunications; VOIP telecommunications services; rental of leased equipment for telecommunications [INT. CLASS 038]
· Installation of computer software; installation and maintenance of internet access software; computer security consultancy; computer security threat analysis for protecting data; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; technical support services, namely, migration of data servers and database applications; telecommunications engineering consultancy; data security consultancy; internet security consultancy; computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; updating and maintaining computer software through patches; computer network configuration services; consulting in the field of configuration management for computer hardware and software; computer systems integration services; integration of computer systems and networks; integration and testing of wireless network systems; technical support of wireless network systems, namely, providing backup computer programs and facilities and troubleshooting in the nature of diagnosing computer hardware and software problems; integration and testing of computerized billing systems; installation of billing system computer software [INT. CLASS 042]
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.
TEAS REDUCED FEE CORRESPONDENCE REQUIREMENTS
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.
Note: An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system. Enter the application serial number or registration number and click on “Status” or “Documents.”
How to respond. Click to file a response to this nonfinal Office action.
Toby Bulloff
/Toby E. Bulloff/
Examining Attorney
Law Office 119
(571) 270-1531
toby.bulloff@uspto.gov
RESPONSE GUIDANCE