To: | Sentrycard Technologies, Inc. (jdelehanty@stahlcowen.com) |
Subject: | U.S. Trademark Application Serial No. 90069638 - SENTRY - N/A |
Sent: | November 09, 2020 03:34:32 PM |
Sent As: | ecom126@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90069638
Mark: SENTRY
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Correspondence Address: 55 W. MONROE STREET, SUITE 1200
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Applicant: Sentrycard Technologies, 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: November 09, 2020
· Section 2(d) Refusal – Likelihood of Confusion
· Specimen Does Not Show Use in Commerce
· Information About Specimen Required
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is SENTRY for “Biometric identity cards; Cards encoded with security features for identification purposes; Encoded electronic chip cards containing programming used to Interact with *IDENTIFICATION downloadable software, namely, software for use in remotely accessing biometric fingerprint reader stations and systems, interact with short-range wireless and near field communications technology, and Interact with access systems and controls, including both physical and logical security systems; Encoded electronic chip cards for Use as secure proof of identity and access keys for use with computers, hand-held devices, mobile phone devices, wireless devices, wearables, blue-tooth enabled devices, and tablets, all enabled to store identification, biometrics, security, encryption, and access control data; Encoded identity cards; Radio frequency identification (RFID) credentials, namely, cards and tags, and readers for radio frequency identification credentials” in class 9.
Registrant’s mark is E SENTRY CONNECT for “near field communication (NFC) tags” in class 9.
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 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).
In this case, the marks are similar because the entire literal element of the applied-for mark, SENTRY, is incorporated within the registered mark, E SENTRY CONNECT. Incorporating the entirety of one mark within another, as in the present case, does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods 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 the present case, the disclaimer shows that the wording “E” and “CONNECT” in the registered mark is merely descriptive of or generic for the registrant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording SENTRY the more dominant element of the registered mark.
Comparison of the Goods
In this case, the application uses broad wording to describe “Radio frequency identification (RFID) credentials, namely, cards and tags,” which presumably encompasses all goods of the type described, including the registrant’s more specific “near field communication (NFC) tags.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). As the attached articles from How Stuf Works and Blue Bite demonstrate, NFC technology is a subset of RFID technology. Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s overlapping goods are related.
Therefore, upon encountering the relevant marks used in connection with the relevant goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Consequently, registration is refused under Section 2(d).
Applicant should note the following additional ground for refusal.
Specimen Does Not Show Use in Commerce
Registration is refused because the specimen appears to consist of a digitally created or altered image or a mockup of a depiction of the mark on the goods or their packaging and does not show the applied-for mark as actually used in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904.04(a), 904.07(a).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce. See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).
In this case, the product image lacks definition and has unusually sharp edges, in the manner of a digital rendering. Therefore, the submitted specimen cannot be accepted.
Applicant may respond to the specimen refusal by satisfying one of the following options 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 and (b) shows the mark in actual use in commerce for the goods identified in the application. 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 specimen(s) was/were in use in commerce at least as early as the filing date of the application.” The substitute specimen cannot be accepted without this statement. For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
If applicant submits an acceptable verified substitute specimen or amends to Section 1(b), the requirement below for additional information/documentation about the original specimen will be withdrawn. The requirement below as to the original specimen will be made final if applicant submits a substitute specimen that is not acceptable or does not amend to Section 1(b), and also does not respond completely to the requirement below.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if applicant responds to the refusals, applicant must also respond to the requirement set forth below.
Information About Specimen Required
To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. A specimen must show the mark as actually used in commerce, which means use in the ordinary course of trade, and not merely to reserve a right in the trademark. 15 U.S.C. §§1051, 1052, 1127. Because the specimen of record appears to be digitally created or altered, or is a mockup, further information is necessary to determine whether the specimen is in actual use in commerce.
Answer for each specimen/photograph/image previously provided. For any website source, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Explain whether the specimen was created for submission with this application. If so, specify the date each specimen was created. If applicant used the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) For the goods pictured in the specimen, provide documentation that shows payment or other consideration made for the goods (preferably dating prior to the application filing date), redacting personal or private information of buyers as necessary.
(4) Provide information about and examples of how applicant’s goods appear in the actual sales environment. For each source, specify when the goods were first available for sale and if the goods are still available for sale in that environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
If any of the information or documentation listed above is unavailable to applicant, please provide an explanation of the circumstances resulting in such unavailability and, to the best of applicant’s ability, a summary or description of the required information or documentation. In re Planalytics, Inc., 70 USPQ2d 1453, 1457 n.2 (TTAB 2004).
Failure to comply with a requirement to furnish information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Advisory – Responding to a Non-Final Office Action
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. 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.
Click to file a response to this nonfinal Office action.
/Sara Anne Helmers/
Sara Helmers (she/her)
Trademark Examining Attorney
Law Office 126
571-270-3639
Sara.Helmers@uspto.gov
RESPONSE GUIDANCE