Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  July 06, 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion (Partial Refusal)
• Amended Identification of Goods and Services Requirement
• Multiple-Class Application Requirements

 

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

THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4574367.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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).  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 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. 

 

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; computer software for digital asset management systems; downloadable computer software for digital asset management systems; downloadable computer software applications for digital asset management systems; computer software for digital multi media file management systems; downloadable computer software for digital multi media file management systems; downloadable computer software applications for digital multi media file management systems; computer software for digital evidence management systems; downloadable computer software for digital evidence management systems; downloadable computer software applications for digital evidence management systems; 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; 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; clothing that protects against serious or life-threatening injuries; protective clothing for the prevention of accident or injury; protective clothing (body armor); abdomen protectors for protection against injury (other than parts of sports suits or adapted for use in specific sporting activities); protective clothing made from ballistic resistant materials; bullet-proof clothing; bullet-proof vests / bullet-proof waistcoats; stab-proof clothing; stab-proof vests / stab-proof waistcoats; slash-proof clothing; slash-proof vests / slash-proof waistcoats; headgear for protection against injury; protective helmets; balaclavas for protection against accidents; protective masks; protection masks; face-protection shields; jackets for protection against injury; trousers for protection against injury; shin guards for protection against injury (other than sports articles or parts of sports suits); footwear for protection against injury; boots for protection against injury; socks for protection against injury; gloves for protection against injury; eye protection apparatus; shields for protecting the body against injury; the aforementioned goods in this class do not include motorcycle helmets or bicycle helmets.”

 

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 is 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 portion of the marks is 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.  Id.

 

Therefore, the marks are confusingly similar. 

 

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 and/or services] 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 offering 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 attached evidence from Uniform Warehouse, Corrections1, Police1, and PointBlank. 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).

 

As the wording in the marks is identical, and the goods related, registration must be refused in part under Section 2(d) of the Trademark Act.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

The wording “computer software for digital asset management systems; downloadable computer software for digital asset management systems; downloadable computer software applications for digital asset management systems; computer software for digital multimedia management systems; downloadable computer software for digital multimedia file management systems; computer software for digital evidence management systems; downloadable computer software for digital evidence management systems; downloadable computer software applications for digital evidence management system; 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; 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; clothing that protects against serious or life-threatening injuries; protective clothing for the prevention of accident or injury; headgear for protection against injury; shields for protecting the body against injury,” in Class 9 in the identification of goods, “defense” in Class 41, and “leasing, rental of computer software, rental of computer applications for body-worn audio-visual cameras, scanners” in Class 42 is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant has classified “education information … relating to self-defense; education information … relating to defense” in International Class 41; however, the proper classification is International Class 45.  Therefore, applicant may respond by (1) adding International Class 45 to the application and reclassifying these services in the proper international class, (2) deleting “education information … relating to self-defense; education information … relating to defense” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Additionally, the wording “face protection shields” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “protective industrial face shields” in Class 9, and “personal protective equipment, namely, face shields for use in medical and dental fields” in Class 10.

 

Furthermore, the wording “education information … relating to security” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “education information … relating to computer security” in Class 42 and “education information … relating to physical security” in Class 45.

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

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 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; {specify, e.g. downloadable, recorded} computer software for {specify function, e.g. document management} for digital asset management systems; downloadable computer software for {specify function, e.g. document management} for digital asset management systems; downloadable computer software applications for {specify function, e.g. document management} for digital asset management systems; {specify, e.g. downloadable/recorded} computer software for {specify function, e.g. document management} for digital multi media file management systems; downloadable computer software for {specify function, e.g. document management} for digital multi media file management systems; downloadable computer software applications for {specify function, e.g. document management} for digital multi media file management systems; {specify, e.g. downloadable/recorded} computer software for {specify function, e.g. document management} for digital evidence management systems; downloadable computer software for {specify function, e.g. document management} for digital evidence management systems; downloadable computer software applications for {specify function, e.g. document management} for digital evidence management systems; {specify, e.g. downloadable/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; {specify, e.g. downloadable/recorded} computer software for body-worn audio-visual cameras; downloadable computer software for {specify function, e.g video coding} for body-worn audio-visual cameras; downloadable computer software applications for {specify function, e.g video coding} for body-worn audio-visual cameras; {specify, e.g. downloadable/recorded} facial recognition software for body-worn audio-visual cameras; clothing that protects against serious or life-threatening injuries, namely, {specify, e.g. hard hats}; protective clothing for the prevention of accident or injury, namely, {specify, e.g. hard hats}; protective clothing, namely, body armor; abdomen protectors for protection against injury other than parts of sports suits or adapted for use in specific sporting activities; protective clothing made from ballistic resistant materials; bullet-proof clothing; bullet-proof vests; bullet-proof waistcoats; stab-proof clothing; stab-proof vests; stab-proof waistcoats; slash-proof clothing; slash-proof vests; slash-proof waistcoats; headgear for protection against injury, namely, protective helmets; protective helmets; balaclavas for protection against accidents; protective masks for the prevention of accident or injury; protection masks for the prevention of accident or injury; industrial face-protection shields; jackets for protection against injury; trousers for protection against injury; shin guards for protection against injury other than sports articles or parts of sports suits; footwear for protection against injury; boots for protection against injury; socks for protection against injury; gloves for protection against injury; eye protection apparatus; {specify e.g. face, hand-held} shields for protecting the body against injury; the aforementioned goods in this class do not include motorcycle helmets or bicycle helmets

 

Class 10:         Personal protective equipment, namely, face shields for use in medical and dental fields

 

Class 41: Education, namely, provision of training, education information, all relating to self-defense; education, namely, provision of training, education information all relating to {specify kind of defense, self-defense, defense of professional license} defense; education, namely,  provision of training, education information all relating to {specify, e.g. physical, building} 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 body-worn audio-visual cameras, scanners; leasing, rental of computer software for {specify purpose of software}; rental of computer applications for {specify purpose of software} for 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; providing information on computer security

 

Class 45:         Providing information in the field of self-defense; providing information in the field of {specify what kind of defense, e.g. defense of professional license} defense; providing information in the field of {specify, e.g. physical, building} security

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 5 classes; however, applicant submitted a fee sufficient for only 3 classes.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/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 July 06, 2020 for

U.S. Trademark Application Serial No. 88837018

 

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 July 06, 2020, 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.”