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:  August 14, 2021

 

 

 

INTRODUCTION

 

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.

 

LETTER OF PROTEST

 

The Office of the Deputy Commissioner for Trademark Examination Policy has considered a Letter of Protest received in connection with this application.  The evidence presented in the submission was forwarded to the trademark examining attorney for consideration.  See TMEP §1715.

 

The trademark examining attorney is incorporating this evidence by reference and taking further action, as specified below.  See TMEP §1715.02(b).

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal
• Amendment of the Identification of Goods and Services Required
• Clarification of the Number of Classes for Which Registration is Sought Required

 

Also included herein is an advisory regarding a potential Section 2(d) Refusal for a likelihood of confusion with prior-filed applications as well as multiple-class application requirements.

 

POTENTIAL SECTION 2(d) REFUSAL - PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87165647, 87719017, 87814933, 87816752, 87944830, 87944840, 88127796, 88362367, 88722118, 88722141, and 88862436 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

Although the applicant is not required to respond to the issue of the prior pending applications, the applicant must respond to the below refusal and requirements within six months of the mailing date of this Office action to avoid abandonment.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4330325, 4474742, 5213132, 5842256, 6201210, 6295396, and 1761135.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Here, the applicant’s mark is HALO for “Computers; personal computers; electronic computers; communications computers; computer peripheral devices; computer peripheral equipment; input devices for computers; computer hardware; computer hardware for use in taking measurements; computers for use in data management; multifunctional electronic devices for displaying, measuring, and uploading to information to the Internet; computer hardware for use in taking electrocardiograms; personal digital assistants; electronic personal organizers; computer software for monitoring and controlling communication between devices; computer software for monitoring, processing, displaying, storing and transmitting data; digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, visual and audiovisual files; sensors for scientific use; electronic monitors; digital electronic devices comprised primarily of display screens and software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; computer software for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; computer software for alerts, messages, emails, and reminders”, “Monitoring devices for medical purposes; monitoring instruments, sensors and alarms, medical devices for measuring body weight and estimating body fat percentage; general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying body movement and other physiological and physical parameters; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption, pulse, and respiratory events,” “Telecommunications, namely, communication via portable electronic devices, portable media players, portable digital devices, speakers, smart speakers, audio speakers, loudspeakers, amplifiers, for transmitting, accessing, receiving, uploading, downloading, encoding, decoding, streaming, displaying, storing, caching, and transferring voice, audio, visual images, data, books, photos, videos, text, content, audiovisual works, multimedia works, literary works, files, and other electronic works; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; communications services, namely, transmission and distribution of voice, audio, visual images via global communications networks; interactive broadcasting and webcasting services over the Internet and telecommunications networks; audio broadcasting; audio and video broadcasting services over the Internet; Internet broadcasting services,” “Health counseling; health assessment services; wellness and health-related consulting services; counseling services in the fields of health, nutrition and lifestyle wellness; providing programs for nutrition, health and well-being; provision of information in the fields of nutrition, health and well-being; providing a website and online database featuring information concerning nutrition, health and well-being; providing information on nutrition, health and well-being accessible by means of computers, the Internet, wireless communication devices, web-based applications, mobile phone applications and other electronic means; health assessment surveys; health risk assessment surveys; health care relating to homeopathy,” and “Social introduction and networking services; providing access to computer databases and online searchable databases in the fields of social networking and social introduction; online social networking services; providing information in the form of databases featuring information in the fields of social networking and social introduction; providing an internet website portal for engaging in social networking; providing news, information and commentary in the field of social networking; personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction services; providing a social networking website for entertainment purposes; providing an online portal for social networking through virtual communities.”

 

The registrants’ marks are:

 

• HALO (U.S. Registration No. 1761135) for “low power DC/DC converter modules, isolation modules and filters, for use with local area networks (LAN)”

 

• HALO WAYPOINT (U.S. Registration No. 4330325) for the relevant services “Providing a web-based online portal for online social networking”

 

• HALO UNLIMITED (U.S. Registration No. 4474742) for “Health screening services in the field of infant hearing; Pediatric health care services”

 

• HALOBOP with stylization (U.S. Registration No. 5213132) for the relevant goods “Computers; Computer peripheral devices; Laptop computers; Tablet computers; Smartwatches; Pedometers; Wearable activity trackers; Wireless communication devices for voice, data or image transmission; Baby monitors; 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”

 

• GO HALO LIVE (U.S. Registration No. 5842256) for the relevant services “telecommunication Services, namely, Electronic bulletin board services, Providing user access to global computer networks; electronic transmission of data; providing instant messaging; Audio and video broadcasting services over the internet or other communications networks, featuring uploaded, posted, displayed, tagged, images, graphics, photos and video for others; Providing online forums for transmission of messages among computer users; providing Internet chatrooms; Transmission of electronic mail; none of the foregoing for use in connection with gaming or video games”

 

• HALO ION (U.S. Registration No. 6201210) for “Medical devices, namely, patient monitors for monitoring vital signs, blood properties or respiratory events; patient sensors, namely, patient monitoring sensors and alarms”

 

• HALO INDEX (U.S. Registration No. 6295396) for “Medical devices, namely, patient monitors for monitoring vital signs, blood properties or respiratory events; patient sensors, namely, patient monitoring sensors and alarms”

 

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. 

 

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).

 

Here, the applicant’s mark HALO is confusingly similar to the reg the registrant’s marks are HALO, HALO WAYPOINT, HALO UNLIMITED, HALOBOP, GO HALO LIVE, HALO ION, and HALO INDEX. 

 

The registrants’ marks completely encompass the applicant’s mark.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, 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.

 

Regarding U.S. Registration No. 1761135, applicant’s mark is HALO and registrant’s mark is HALO.  These marks are identical in appearance, 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 they 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/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

For these reasons, when consumers encounter the parties' goods and/or services using marks with these similarities, they are likely to be confused as to the source of the goods and/or services.  Therefore, the marks are confusingly similar.

 

Comparison of the Goods and Services

 

The goods and/or services 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 and/or services 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).

 

Reg. No. 1761135 (HALO)

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).

 

Here, applicant’s “Computers; personal computers; electronic computers; communications computers; computer peripheral devices; computer peripheral equipment; input devices for computers; computer hardware; computer hardware for use in taking measurements; computers for use in data management; multifunctional electronic devices for displaying, measuring, and uploading to information to the Internet; computer hardware for use in taking electrocardiograms; personal digital assistants; electronic personal organizers; computer software for monitoring and controlling communication between devices; computer software for monitoring, processing, displaying, storing and transmitting data; digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, visual and audiovisual files; sensors for scientific use; electronic monitors; digital electronic devices comprised primarily of display screens and software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; computer software for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; computer software for alerts, messages, emails, and reminders” is closely related to the registrant’s ““low power DC/DC converter modules, isolation modules and filters, for use with local area networks (LAN)”.

 

The attached Internet evidence to the letter of protest, consisting of screenshots of third-party websites as well as third-party registrations, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  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).

 

Reg. No. 4330325 (HALO WAYPOINT)

 

In this case, the application uses broad wording to describe “Social introduction and networking services; providing access to computer databases and online searchable databases in the fields of social networking and social introduction; online social networking services; providing information in the form of databases featuring information in the fields of social networking and social introduction; providing an internet website portal for engaging in social networking; providing news, information and commentary in the field of social networking; personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction services; providing a social networking website for entertainment purposes; providing an online portal for social networking through virtual communities”, which presumably encompasses all services of the type described, including registrant’s more narrow “providing a web-based online portal for online social networking “.  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).  Thus, applicant’s and registrant’s services 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 services 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 services are related.

 

Reg. No. 4474742 (HALO UNLIMITED)

 

In this case, the application uses broad wording to describe “Health counseling; health assessment services; wellness and health-related consulting services; counseling services in the fields of health, nutrition and lifestyle wellness; providing programs for nutrition, health and well-being; provision of information in the fields of nutrition, health and well-being; providing a website and online database featuring information concerning nutrition, health and well-being; providing information on nutrition, health and well-being accessible by means of computers, the Internet, wireless communication devices, web-based applications, mobile phone applications and other electronic means; health assessment surveys; health risk assessment surveys; health care relating to homeopathy”, which presumably encompasses all services of the type described, including registrant’s more narrow “health screening services in the field of infant hearing; Pediatric health care services”.  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).  Thus, applicant’s and registrant’s services 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 services 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 services are related.

 

Reg. No. 5213132 (HALOBOP)

 

First, the goods “Computers; computer peripheral devices; computer hardware” in the application and registration(s) are identical.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

Second, the registration uses broad wording to describe “computers; Computer peripheral devices; Computer hardware”, which presumably encompasses all goods of the type described, including applicant’s more narrow “Computers; personal computers; electronic computers; communications computers; computer peripheral devices; computer peripheral equipment; input devices for computers; computer hardware; computer hardware for use in taking measurements; computers for use in data management; multifunctional electronic devices for displaying, measuring, and uploading to information to the Internet; computer hardware for use in taking electrocardiograms; personal digital assistants; electronic personal organizers; digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, visual and audiovisual files; digital electronic devices comprised primarily of display screens and software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files”.  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).  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)).

 

Finally, Similarly, applicant’s broadly worded “Computers; personal computers; electronic computers; communications computers; computer peripheral devices; computer peripheral equipment; computer hardware; computers for use in data management; multifunctional electronic devices for displaying, measuring, and uploading to information to the Internet; computer software for monitoring and controlling communication between devices; computer software for monitoring, processing, displaying, storing and transmitting data; digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, visual and audiovisual files; electronic monitors; digital electronic devices comprised primarily of display screens and software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; computer software for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; computer software for alerts, messages, emails, and reminders” encompasses registrant’s narrower “Computers; Computer peripheral devices; Laptop computers; Tablet computers; Smartwatches; Pedometers; Wearable activity trackers; Wireless communication devices for voice, data or image transmission; Baby monitors; 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.  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).  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 goods are related.

 

Reg. No. 5842256 (GO HALO LIVE)

 

In this case, the application uses broad wording to describe “Telecommunications, namely, communication via portable electronic devices, portable media players, portable digital devices, speakers, smart speakers, audio speakers, loudspeakers, amplifiers, for transmitting, accessing, receiving, uploading, downloading, encoding, decoding, streaming, displaying, storing, caching, and transferring voice, audio, visual images, data, books, photos, videos, text, content, audiovisual works, multimedia works, literary works, files, and other electronic works; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; communications services, namely, transmission and distribution of voice, audio, visual images via global communications networks; interactive broadcasting and webcasting services over the Internet and telecommunications networks; audio broadcasting; audio and video broadcasting services over the Internet; Internet broadcasting services, which presumably encompasses all services of the type described, including registrant’s more narrow “Telecommunication Services, namely, Electronic bulletin board services, Providing user access to global computer networks; electronic transmission of data; providing instant messaging; Audio and video broadcasting services over the internet or other communications networks, featuring uploaded, posted, displayed, tagged, images, graphics, photos and video for others; Providing online forums for transmission of messages among computer users; providing Internet chatrooms; Transmission of electronic mail; none of the foregoing for use in connection with gaming or video games”.  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).  Thus, applicant’s and registrant’s services 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 services 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 services are related.

 

Reg. No. 6201210 (HALO ION) and 6295396 (HALO INDEX)

 

In this case, the application uses broad wording to describe “monitoring devices for medical purposes; monitoring instruments, sensors and alarms, medical devices for measuring body weight and estimating body fat percentage; general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying body movement and other physiological and physical parameters; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption, pulse, and respiratory events”, which presumably encompasses all goods of the type described, including registrant’s more narrow “medical devices, namely, patient monitors for monitoring vital signs, blood properties or respiratory events; patient sensors, namely, patient monitoring sensors and alarms”.  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).  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 goods are related.

 

Therefore, as these goods and/or services originate from the same sources, these goods and/or services are related for likelihood of confusion purposes. 

 

Because the marks are confusingly similar and the goods and/or services are closely related, consumers are likely to be confused as to the source of the goods and/or services.  Thus, registration is refused pursuant to Trademark Act Section 2(d). 

 

RESPONSE TO REFUSAL

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

REQUIREMENTS

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Select entries from applicant’s identification of goods and services are indefinite and must be clarified.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods and services have no common commercial or generic name, applicant must describe the product or service, its main purpose, and its intended uses.  See id.  Furthermore, select entries from the applicant’s identification of goods and services need clarification because they are too broad and could include goods and services classified in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The chart below identifies applicant’s indefinite and broad identification entries, the rationale explaining why the entries are indefinite or broad, and suggested definite and clear wording which applicant may adopt.  The chart also identifies applicant’s entries that contain parentheticals and suggested wording which applicant may adopt.  Suggested changes are displayed as underlined wording and punctuation.  A blank underline ( ______ ) indicates an area applicant must fill-in following the requirements in the curly-brackets to the right of the blank underline.  Applicant may substitute the wording contained within the table for each indefinite and broad entry, if accurate.

 

 

Applicant may adopt the following complete identification of goods and services, if accurate, with changes underlined:

 

International Class 9:  Computers; personal computers; electronic computers; communications computers; computer peripheral devices; computer peripheral equipment; input devices for computers; computer hardware; computer hardware for use in taking measurements; computers for use in data management; multifunctional electronic devices for displaying, measuring, and uploading to information to the Internet; computer hardware for use in taking electrocardiograms; personal digital assistants; electronic personal organizers; downloadable computer software for monitoring and controlling communication between devices; downloadable computer software for monitoring, processing, displaying, storing and transmitting data; digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, visual and audiovisual files; sensor chips for scientific use; electronic monitors for monitoring electric current and electrical signals; digital electronic devices comprised primarily of display screens and recorded software for sending, receiving, and setting alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; downloadable computer software for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; downloadable computer software for sending, receiving, and setting alerts, messages, emails, and reminders

 

International Class 10: Monitoring devices for medical purposes, namely, body fat monitors, blood glucose monitors, electronic temperature monitors, and blood oxygen saturation, blood gas concentration, and vital sign monitors; monitoring instruments, sensors, and alarms, namely, patient monitoring sensors and alarms and medical instruments for monitoring vital signs, blood pressure, and heart rate; medical devices for measuring body weight and estimating body fat percentage; general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring, and displaying body movement and other physiological and physical parameters in the nature of vital signs, blood properties, and respiratory events; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption, pulse, and respiratory events; electrical weight loss body belt

 

International Class 14: Jewelry; jewelry cases; jewelry boxes; ornamental lapel pins; bracelets; rings; necklaces; jewelry chains; jewelry, namely, arm cuffs

 

International Class 38: Telecommunications, namely, communication via portable electronic devices, portable media players, portable digital devices, speakers, smart speakers, audio speakers, loudspeakers, amplifiers, for transmitting, accessing, receiving, uploading, downloading, encoding, decoding, streaming, displaying, storing, caching, and transferring voice, audio, visual images, data, books, photos, videos, text, content, audiovisual works, multimedia works, literary works, files, and other electronic works; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; communications services, namely, transmission and distribution of voice, audio, visual images via global communications networks; interactive audio and video broadcasting and webcasting services over the Internet and telecommunications networks; audio broadcasting; audio and video broadcasting services over the Internet; Internet broadcasting services

 

International Class 42: Providing online non-downloadable computer software for monitoring and controlling communication between devices; Providing online non-downloadable computer software for monitoring, processing, displaying, storing and transmitting data; providing online non-downloadable computer software for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; providing online non-downloadable computer software for sending, receiving, and setting alerts, messages, emails, and reminders; user verification services, namely, electronic signature verification services using technology to authenticate user identity

 

International Class 44: Health counseling; health assessment services; wellness and health-related consulting services; counseling services in the fields of health, nutrition and lifestyle wellness; Providing health care services in the nature of wellness programs for nutrition, health, and well-being; provision of information in the fields of nutrition, health and well-being; providing a website and online database featuring information concerning nutrition, health and well-being; providing information on nutrition, health and well-being accessible by means of computers, the Internet, wireless communication devices, web-based applications, mobile phone applications and other electronic means; health assessment services in the nature of performing health assessment surveys; health care relating to remedial exercise; health risk assessment services in the nature of performing health risk assessment surveys; health care relating to homeopathy; health care relating to relaxation therapy; providing weight loss program services; weight management services, namely, providing weight loss and/or weight maintenance programs

 

International Class 45: Internet-based social introduction and networking services; providing access to computer databases and online searchable databases in the fields of social networking and social introduction; online social networking services; providing information in the form of databases featuring information in the fields of social networking and social introduction; user verification services, namely, verification of personal identity as part of personal background investigations; providing an internet website portal for engaging in social networking; providing news, information and commentary in the field of social networking; personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction services; providing a social networking website for entertainment purposes; providing an online portal for social networking through virtual communities

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The applicant has identified goods and/or services that could be classified in at least seven (7) classes.  However, the applicant submitted a fee sufficient for only six (6) 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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(s) already paid (view the USPTO’s current fee schedule). 

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

For an overview of the requirements for a Sections 1(b) and 44 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

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

 

 

/Sarah C. Hopkins/

Sarah Hopkins

Examining Attorney

Trademark Office 123

(571) 270-0942

sarah.hopkins@uspto.gov

 

 

 

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 August 14, 2021 for

U.S. Trademark Application Serial No. 90480178

 

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. 

 

 

/Sarah C. Hopkins/

Sarah Hopkins

Examining Attorney

Trademark Office 123

(571) 270-0942

sarah.hopkins@uspto.gov

 

 

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 August 14, 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.”