Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 01, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 15, 2020.

 

In a previous Office action dated July 6, 2020, the trademark examining attorney refused registration in-part of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirements:  amended identification of goods and services requirement, multiple-class application requirements.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: multiple-class application requirements. See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of confusion (partial refusal)
• Amended identification of goods and services requirement (partial requirement)
• Partial abandonment advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (PARTIAL REFUSAL)

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 4574367.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

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 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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.  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. 

 

Applicant’s mark is HALO, stylized, for in relevant part, “cameras worn on the body; wearable cameras; video cameras worn on the body; wearable video cameras; body-worn, audio-visual cameras; chargers for body-worn, audio-visual cameras; docking stations for body-worn, audio-visual cameras.”

 

Registrant’s mark is HALO for “soft body armor.”

 

SIMILARITY OF THE MARKS

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is HALO, stylized, and registrant’s mark is HALO. Thus, the word portion of the marks are identical in terms of sound and meaning, “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).  Additionally, because the word portions of the marks are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Applicant argues that the marks are visually different, however this argument is unpersuasive as the marks are composed of identical wording with the only differences being stylization present in applicant’s mark. 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 and services.  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)).

 

RELATEDNESS OF THE GOODS

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). The attached Internet evidence, consisting of entities providing both soft body armor and the types of goods offered by applicant, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See previously attached evidence from Uniform Warehouse, Corrections1, Police1, and PointBlank. See additional attached evidence from Galls, Security Pro USA, and LAPG. Thus, applicant’s and registrant’s goods 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).

 

Applicant argues that the goods are fundamentally different. However, this argument is unpersuasive as the attached evidence shows that the goods are often provided by the same entity. Further, determining likelihood of confusion is based on the description of the goods 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)).  As such, applicant’s extrinsic evidence does not obviate a likelihood of confusion finding, as the goods are evaluated based on how they are identified in the identification of goods.

 

Applicant argues that the consumers of the goods are sophisticated and thus would not be confused as to the source of the goods. However, this argument is unpersuasive as the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

Applicant argues that there has been no actual confusion in the marketplace. This argument is unpersuasive as “‘[a] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).

 

Applicant argues that the presence of additional third party marks with the halo wording allows for registration. This argument is unpersuasive as third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

 

As the marks are composed of identical wording, and have related goods, refusal of registration in part under Section 2(d) of the Trademark Act is made final.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT (PARTIAL REQUIREMENT)

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The wording “recorded computer software for body-worn audio-visual cameras; downloadable computer software for body-worn audio-visual cameras; downloadable computer software applications for body-worn audio-visual cameras; facial recognition software for body-worn audio-visual cameras” in the identification of goods is indefinite and must be clarified because the function and nature of the software is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “updating, maintenance, repair of computer software for body-worn audio-visual cameras, scanners” in the identification of services is indefinite and must be clarified because the function of the software is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate:

 

Class 9: cameras worn on the body; wearable cameras; video cameras worn on the body; wearable video cameras; body-worn, audio-visual cameras; chargers for body-worn, audio-visual cameras; docking stations for body-worn, audio-visual cameras; recorded computer software for digital asset input, storage and management in digital asset management systems; downloadable computer software for digital asset input, storage and management in digital asset management systems; downloadable computer software applications for digital asset input, storage and management in digital asset management systems; recorded computer software for digital multi media file input, storage and management in digital multi media file management systems; downloadable computer software for digital multi media file input, storage and management in digital multi media management systems; downloadable computer software applications for digital multi media file digital input, storage and management in digital multi media file management systems; recorded computer software for digital evidence input, storage and management in digital evidence management systems; downloadable computer software for digital evidence input, storage and management in digital evidence management systems; downloadable computer software applications for digital evidence input, storage and management in digital evidence management systems; recorded computer software for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio-visual cameras, scanners; downloadable computer software for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio-visual cameras, scanners; downloadable computer software applications for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio-visual cameras, scanners; recorded computer software for {specify function, e.g. decrypting video from} body-worn audio-visual cameras; downloadable computer software for {specify function, e.g. decrypting video from} body-worn audio-visual cameras; downloadable computer software applications for {specify function, e.g. decrypting video from} body-worn audio-visual cameras; {specify, e.g. downloadable, recorded} facial recognition software for body-worn audio-visual cameras; the aforementioned goods in this class do not include motorcycle helmets or bicycle helmets; all of the aforesaid goods in relation to body-worn camera technology, video cameras worn on the body, self-defense, defense and security

 

Class 41: Education, namely, provision of training, all relating to self-defense; education, namely, provision of training, all relating to physical defense; education, namely, provision of training, all relating to physical security; rental of body-worn, audio-visual cameras

 

Class 42: electronic data storage, cloud-based electronic data storage, electronic data storage services, electronic data back-up services, all related to sound, images, data from body-worn audio-visual cameras, scanners; updating, maintenance, repair of computer software for {specify purpose of software, e.g. decrypting video} body-worn audio-visual cameras, scanners; leasing, rental of computer software for managing body-worn audio-visual cameras, scanners; leasing, rental of computer applications for managing body-worn audio-visual cameras, scanners; leasing, rental of computer software for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio- visual cameras, scanners; none of the aforementioned services in relation to computer games software and computer game play

 

Class 45: Providing information in the field of self-defense; providing information in the field of physical defense; providing information in the field of physical security

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services 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.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Classes 9 and 42 will be deleted from the application: 

 

Class 9: cameras worn on the body; wearable cameras; video cameras worn on the body; wearable video cameras; body-worn, audio-visual cameras; chargers for body-worn, audio-visual cameras; docking stations for body-worn, audio-visual cameras; recorded computer software for body-worn audio-visual cameras; downloadable computer software for body-worn audio-visual cameras; downloadable computer software applications for body-worn audio-visual cameras; facial recognition software for body-worn audio-visual cameras

 

Class 42: updating, maintenance, repair of computer software for body-worn audio-visual cameras, scanners

 

The application will then proceed with the following goods and services in International Classes 9, 41, 42, and 45 only: 

 

Class 9: recorded computer software for digital asset input, storage and management in digital asset management systems; downloadable computer software for digital asset input, storage and management in digital asset management systems; downloadable computer software applications for digital asset input, storage and management in digital asset management systems; recorded computer software for digital multi media file input, storage and management in digital multi media file management systems; downloadable computer software for digital multi media file input, storage and management in digital multi media management systems; downloadable computer software applications for digital multi media file digital input, storage and management in digital multi media file management systems; recorded computer software for digital evidence input, storage and management in digital evidence management systems; downloadable computer software for digital evidence input, storage and management in digital evidence management systems; downloadable computer software applications for digital evidence input, storage and management in digital evidence management systems; recorded computer software for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio-visual cameras, scanners; downloadable computer software for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio-visual cameras, scanners; downloadable computer software applications for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio-visual cameras, scanners; the aforementioned goods in this class do not include motorcycle helmets or bicycle helmets; all of the aforesaid goods in relation to body-worn camera technology, video cameras worn on the body, self-defense, defense and security

 

Class 41: Education, namely, provision of training, all relating to self-defense; education, namely, provision of training, all relating to physical defense; education, namely, provision of training, all relating to physical security; rental of body-worn, audio-visual cameras

 

Class 42: electronic data storage, cloud-based electronic data storage, electronic data storage services, electronic data back-up services, all related to sound, images, data from body-worn audio-visual cameras, scanners; leasing, rental of computer software for managing body-worn audio-visual cameras, scanners; leasing, rental of computer applications for managing body-worn audio-visual cameras, scanners; leasing, rental of computer software for storing, securing, encrypting, video coding, accessing, downloading, viewing, streaming, sharing, managing, marking, tagging, editing, identifying, redacting, deleting, integrating digital media files, video media files, visual media files, audio media files, multi media files, metadata for body-worn audio- visual cameras, scanners; none of the aforementioned services in relation to computer games software and computer game play

 

Class 45: Providing information in the field of self-defense; providing information in the field of physical defense; providing information in the field of physical security

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Raymond Lee/

Trademark Examining Attorney

Law Office 127

United States Patent & Trademark Office

Raymond.lee@uspto.gov

571-272-5980

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 01, 2021 for

U.S. Trademark Application Serial No. 88837010

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Raymond Lee/

Trademark Examining Attorney

Law Office 127

United States Patent & Trademark Office

Raymond.lee@uspto.gov

571-272-5980

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 01, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”