To: | Axon Enterprise, Inc. (justin@jclarklawtm.com) |
Subject: | U.S. Trademark Application Serial No. 88863005 - AXON FLEET - N/A |
Sent: | June 25, 2020 01:34:39 PM |
Sent As: | ecom111@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88863005
Mark: AXON FLEET
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Correspondence Address:
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Applicant: Axon Enterprise, Inc.
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Reference/Docket No. N/A
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: June 25, 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
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
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s mark AXON FLEET is highly similar to the registered mark AXON because the marks share the distinctive wording AXON. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Lastly, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In this case, the applicant will be required to disclaim the descriptive wording FLEET leaving the dominant portion of both marks as AXON.
In this case, the marks are highly similar. The additional descriptive wording does obviate a likelihood of confusion here.
COMPARISON OF THE GOODS
The applicant’s goods are, “Apparatus for recording video and audio, including cameras and digital recorders; wireless communication devices for voice, data or image transmission; electronic communication equipment and instruments, namely, mobile digital electronic devices for sending and receiving of text, data, audio, image, and video files; surveillance systems comprised of video cameras and weaponry, namely, electronic control devices; mobile digital electronic devices for the sending and receiving of digital data, and for use in providing access to the internet; battery packs; custom camera hardware solutions; custom integrated platform solutions; computer hardware; computer hardware for communication between multiple computers and between computers and local and global computer networks; radios, radio transmitters, and receivers; network communications apparatus; global positioning system devices; global positioning and communication devices, navigational and vehicle monitoring equipment, namely, radio, navigational and global positioning system transponders and receivers; Software for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; software for accessing, browsing and searching online databases; software for the transmission of data, images, audio, and video by wireless communication networks and the internet; software, namely, an application allowing a video recording device to connect to a communications server for the purposes of inputting, storing, processing or outputting information related to recorded audio/video, the location of the client-side computer, or information from other video recording devices; computer hardware for integrating and controlling various communications and weapons systems; software systems for integrating and controlling various communications and weapons systems; cell phone apps for video playback; cell phone apps for audio playback; cell phone apps for recording of narration; cell phone apps for editing; electronic apparatus with multimedia functions for use with all of the aforesaid goods, namely, mobile digital electronic devices for recording and transmitting, data, audio, and video files; motion picture films that include evidence of incidents in the field of public safety.” The Registrant’s goods are, “Video content communications server hardware and computer software for controlling and managing access server applications for video content.”
In this case, the registrant’s goods are listed broadly and could incorporate the more narrow description of the applicant’s goods. The goods of the parties are closely related and could be used and/or sold together. Thus, the goods travel through the same channels of trade to the same class of purchasers.
In conclusion, the use of such similar marks for related goods is likely to cause confusion among consumers. Accordingly, applicant’s mark is refused registration under Section 2(d) of the Trademark Act.
DISCLAIMER
The attached evidence shows that FLEET is defined as, “a group (as of ships, planes, or trucks) operated under unified control.” Thus, fleet describes the fact that applicant offers fleet services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FLEET” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
PRIOR 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 OF GOODS
The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may adopt the following identification, if accurate:
International Class 9: Apparatus for recording video and audio, namely, cameras and digital recorders; wireless communication devices for voice, data or image transmission; electronic communication equipment and instruments, namely, mobile digital electronic devices for sending and receiving of text, data, audio, image, and video files; electronic control devices for surveillance systems comprised of video cameras and weaponry; mobile digital electronic devices for the sending and receiving of digital data, and for use in providing access to the internet; battery packs; custom camera hardware solutions, namely, {specify the solutions, e.g., camera lens adapters}; custom integrated platform solutions [specify the solutions, e.g., mobile computer and operating platforms consisting of data transceivers, wireless networks]; computer hardware; computer hardware for communication between multiple computers and between computers and local and global computer networks; radios, radio transmitters, and receivers; network communications apparatus, namely, [specify, e.g., namely, network routers, network servers]; global positioning systems; global positioning and communication devices, navigational and vehicle monitoring equipment, namely, radio, navigational and global positioning system transponders and receivers; {specify, e.g., downloadable or recorded} software for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; {specify, e.g., downloadable or recorded} software for accessing, browsing and searching online databases; {specify, e.g., downloadable or recorded} software for the transmission of data, images, audio, and video by wireless communication networks and the internet; {specify, e.g., downloadable or recorded} software, namely, an application allowing a video recording device to connect to a communications server for the purposes of inputting, storing, processing or outputting information related to recorded audio/video, the location of the client-side computer, or information from other video recording devices; computer hardware for integrating and controlling various communications and weapons systems; {please specify, e.g. downloadable or recorded} software systems for integrating and controlling various communications and weapons systems; {please specify, e.g., downloadable or recorded} cell phone software applications for video playback; {please specify, e.g., downloadable or recorded} cell phone software applications for audio playback; {please specify, e.g., downloadable or recorded} cell phone software applications for recording of narration; {please specify, e.g., downloadable or recorded} cell phone software applications for editing; electronic apparatus with multimedia functions for use with all of the aforesaid goods, namely, mobile digital electronic devices for recording and transmitting, data, audio, and video files; motion picture films that include evidence of incidents in the field of public safety
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.
SPECIMEN UNACCEPTABLE
Specifically, the specimen consists of an installation manual. It fails to show the mark as it is used in the advertisement or sale of the services as listed in the application.
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
RESPONSE GUIDELINES
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/lindaorndorff/
Examining Attorney
Law Office 111
(571)272-5496
Linda.Orndorff@uspto.gov
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDANCE