United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90157511
Mark: HALO
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Correspondence Address: HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 SOUTH SEVENTH STREET, SUITE 2700
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Applicant: Halo Innovations, Inc.
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Reference/Docket No. 11009.8US03
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 13, 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
· Prior Pending Applications
· Section 2(d) Refusal – Likelihood Of Confusion
· Amended Identification Required
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 6196174, 5442025, and 5213132. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied to register the mark HALO for “Device for monitoring infant vital signs and app for alerting and tracking infant wellness; wearable infant monitoring device; infant monitoring device ” in class 9.
Registered mark No. 6196174 MOTOROLA HALO+ is for “baby monitors” in class 9.
Registered mark No. 5442025 PARALLEL HALO is for “Camcorders; Cameras; Movie projectors; Slide projectors; Tablet computers; Television and video converters; Video baby monitors; Video monitors; Video projectors; none of the aforementioned goods comprising or incorporating video game or computer game functionality” in class 9.
Registered mark No. 5213132 HALOBOP is for “Computers; Computer operating programs, recorded; Computer peripheral devices; Data processing equipment, namely, couplers; Video game cartridges; Downloadable electronic publications in the nature of magazine in the field of fashion; Computer software and firmware for operating system programs; Laptop computers; Tablet computers; Smartglasses; Smartwatches; Pedometers; Dictating machines; Radios; Smartphones; Mobile phones; Wearable activity trackers; Wireless communication devices for voice, data or image transmission; Headphones; Portable media players; Electronic book readers; baby monitors; Electronic educational apparatus, namely, communication blocks that manipulate and convey information electronically based on their arrangement and are used for cognitive development in disciplines such as counting, spelling or quantitative; Eye glasses; 3D spectacles; Battery chargers; Batteries, electric; Video disks and video tapes with recorded animated cartoons; Computer hardware; Countdown timer(s) and alarms to remind a person to take or give a medication(s) and/or to remind a person to do a daily routine(s) incorporated into a wristband; Electric navigational instruments; Audio- and video-receivers; Remote controls for massage chairs; Remote controls for projectors; Spectacles, frames and cases; Projection screens for movie films” 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 [or services] and differences in the marks.”); TMEP §1207.01.
SIMILARITY OF THE MARKS
In this case, applicant’s mark HALO is confusingly similar to registered marks MOTOROLA HALO+, PARALELL HALO, and HALOBOP because the marks share the same term HALO.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, the applied-for mark HALO shares the same term, HALO, with registered marks MOTOROLA HALO+, PARALELL HALO, and HALOBOP. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
In addition, the term HALO is the first term in registered mark HALOBOP and the only term in the applied-for mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, consumers are more likely to focus on the term HALO and confused the marks.
Therefore, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
Applicant has applied to register the mark HALO for “Device for monitoring infant vital signs and app for alerting and tracking infant wellness; wearable infant monitoring device; infant monitoring device ” in class 9.
Registered mark MOTOROLA HALO+ is for “baby monitors” in class 9.
Registered mark PARALLEL HALO is for “Camcorders; Cameras; Movie projectors; Slide projectors; Tablet computers; Television and video converters; Video baby monitors; Video monitors; Video projectors; none of the aforementioned goods comprising or incorporating video game or computer game functionality” in class 9.
Registered mark HALOBOP is for “Computers; Computer operating programs, recorded; Computer peripheral devices; Data processing equipment, namely, couplers; Video game cartridges; Downloadable electronic publications in the nature of magazine in the field of fashion; Computer software and firmware for operating system programs; Laptop computers; Tablet computers; Smartglasses; Smartwatches; Pedometers; Dictating machines; Radios; Smartphones; Mobile phones; Wearable activity trackers; Wireless communication devices for voice, data or image transmission; Headphones; Portable media players; Electronic book readers; baby monitors; Electronic educational apparatus, namely, communication blocks that manipulate and convey information electronically based on their arrangement and are used for cognitive development in disciplines such as counting, spelling or quantitative; Eye glasses; 3D spectacles; Battery chargers; Batteries, electric; Video disks and video tapes with recorded animated cartoons; Computer hardware; Countdown timer(s) and alarms to remind a person to take or give a medication(s) and/or to remind a person to do a daily routine(s) incorporated into a wristband; Electric navigational instruments; Audio- and video-receivers; Remote controls for massage chairs; Remote controls for projectors; Spectacles, frames and cases; Projection screens for movie films” in class 9.
CONCLUSION
In summary, the marks are confusingly similar and the goods are related. Accordingly, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
AMDENDED IDENTIFICATION REQUIRED
Class 10:
Health monitoring devices for monitoring infant vital signs, tracking infant wellness metrics being heart rate, body position during sleep, skin temperature and activity during sleep, and sending alerts; wearable infant health monitoring device for monitoring infant vital signs, tracking infant wellness metrics being heart rate, body position during sleep, skin temperature and activity during sleep, and sending alerts; infant health monitoring device for monitoring, tracking infant wellness metrics being heart rate, body position during sleep, skin temperature and activity during sleep, and sending alerts
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.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action.
Erdman, Rachel
/Rachel Erdman/
Examining Attorney
Law Office 104
(571) 272-4717
rachel.erdman@uspto.gov
RESPONSE GUIDANCE