To: | Universal Audio, Inc. (docket@markerylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88672099 - LUNA - US-UAD-042A |
Sent: | November 14, 2019 11:53:24 AM |
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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88672099
Mark: LUNA
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Correspondence Address:
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Applicant: Universal Audio, Inc.
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Reference/Docket No. US-UAD-042A
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: November 14, 2019
SUMMARY OF ISSUES
· REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
· REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES
REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
THIS REFUSAL APPLIES TO THE GOODS SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the following marks:
U.S. Reg. No. 5518837 (“LUNA” for “Audio mixers; Sound mixers; Stereo amplifiers; Electronic docking stations; Loud speaker systems” in International Class 9).
· This refusal applies to applicant’s “Audio production equipment; namely, computer hardware and computer software programs for audio and music production; computer software for digital audio production, processing, and editing; multimedia computer hardware and software for the integration of music, text, audio, graphics, still images and moving pictures and for interconnectivity between personal computers, networked audio hardware, and electronic musical instruments” for International Class 9.
U.S. Reg. No. 4363883 (“LUNA” for “Computer monitor frames; Computer monitors; Computer software for application and database integration; Computer software for communicating with users of hand-held computers; Computer software for creating searchable databases of information and data; Computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Devices for hands-free use of mobile phones; Digital signage monitors; Enterprise software in the nature of a database for non-transactional data and a search engine for database content; Liquid crystal displays; Televisions and monitors; Touch pads; Touch panels; Video monitors; Voice display monitors” in International Class 9, “Business technology software consultation services; Cloud computing featuring software for use in extracting, transferring, loading, storing, viewing, elaborating data and presenting them in an intelligible format for decision making, planning and simulating, in the Business Intelligence and Business Analytics sectors; Computer software consulting; Consulting services in the field of cloud computing; Consulting services in the field of computer-based information systems for businesses; Data migration services; Data mining; Data warehousing; Design, development, installation and maintenance of computer software; Providing an interactive website featuring technology that allows users to enter, access, and synthesize information and generate reports for use in consulting with executives and businesses; Renting computer software” in International Class 42).
· This refusal applies to applicant’s “computer hardware” and “multimedia computer hardware” for International Class 9.
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
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.
Comparison of the Marks
Applicant’s applied-for mark is “LUNA”. The marks in U.S. Registration No. 5518837 and 4363883 are “LUNA”. All marks are in standard character form.
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).
The mark(s) in U.S. Registration No(s). 5518837 and 4363883 are “LUNA”. The applied-for mark is “LUNA”. Consequentially, the word “LUNA” in applicant’s mark and the registrants’ marks is identical in the sound, meaning, and appearance of the written word portion “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Thus, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and/or services. Id.
As such, viewed as a whole, applicant’s mark is substantially similar in sound, connotation and commercial impression to the registered marks.
Comparison of the Goods
The applicant’s and registrants’ goods and/or services relevant to the refusal are listed above.
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)).
The attached Internet evidence relating to “Samsung”, “LG”, and “Dell” shows the same entity provides computer monitors, computer hardware, and multimedia computer hardware. Moreover, the attached Internet evidence relating to “Samsung” and “LG” shows the same entity provides computer hardware, audio production equipment, multimedia computer software, and speaker system. Additionally, the attached Internet evidence relating to “Shure” shows the same entity provides computer hardware, audio production equipment, multimedia computer software, and sound mixer. Consequentially, this evidence shows that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify some of the wording in the identification of goods and/or services because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods and/or services.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant should note that any wording in bold, in italics, underlined and/or
in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s
version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 9: Audio production equipment;, namely, computer hardware and downloadable computer software programs for use in audio and music production; downloadable computer software for use
in digital audio production, processing, and editing; multimedia computer hardware
and downloadable computer software for use in the integration of music, text, audio, graphics, still images and moving pictures and for use in interconnectivity between personal computers, networked audio hardware, and electronic musical
instruments
See TMEP §§1402.01, 1402.03.
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. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
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.
CONCLUSION
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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
/Xu, Elaine/
Trademark Examining Attorney
Law Office 128
(571) 270-5297
elaine.xu@uspto.gov
RESPONSE GUIDANCE