ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1358582
`05/14/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Digilock Asia Ltd.
`
`Limited Liability Company
`
`Incorporated or
`registered in
`
`Hong Kong
`
`FLAT B, 27TH FLOOR GRANDION PLAZA
`NO. 932 CHEUNG SHA WAN ROAD
`LAI CHI KOK, 0
`HONG KONG
`
`NOEL COOK
`HANSON BRIDGETT LLP
`1676 N CALIFORNIA BLVD
`SUITE 620
`WALNUT CREEK, CA 94596
`UNITED STATES
`Primary email: ncook@hansonbridgett.com
`Secondary email(s): ttabfilings@hansonbridgett.com,
`jthiele@hansonbridgett.com
`925-746-8460
`
`Docket no.
`
`36587.1
`
`Registration subject to cancellation
`
`Registration no.
`
`3524558
`
`Registration date
`
`10/28/2008
`
`Register
`
`Registrant
`
`Principal
`
`Roser Co., Ltd.
`400, NAE-RI, APRYANG-MYEON
`GYONGSAN-SI, GYONGSANGBUK-DO
`KOREA, REPUBLIC OF
`
`Goods/services subject to cancellation
`
`Class 006. First Use: May 2008 First Use In Commerce: May 2008
`Goods and services in the class that are subject to cancellation: metal building fittings, namely, metal
`locks
`
`Grounds for cancellation
`
`Abandonment
`
`Mark never used in commerce
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(6)
`
`Attachments
`
`2024-05-14 Petition to Cancel CLEO 3524558.pdf(136055 bytes )
`
`

`

`Justin Thiele osrtae024
`
`/Justin Thiele/
`/Justin Thiele/
`
`Signature
`
`Name
`
`Date
`
`Ex 001 97554055 TSDR.pdf(38143 bytes)
`Ex 001 97554055 TSDR.pdf(38143 bytes )
`Ex 002 97554055 Office Actions.pdf(57921 bytes )
`Ex 002 97554055 Office Actions.pdf(57921 bytes )
`
`Justin Thiele
`
`05/14/2024
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Digilock Asia Ltd.,
`
`
`Petitioner,
`
`
`
`v.
`
`
`Roser Co., Ltd.,
`
`
`Respondent.
`
` Cancellation No.
`
`In the matter of
`Trademark Reg. No.: 3524558
`Registered: October 28, 2008
`Mark: CLEO
`
`Petition to Cancel
`
`
`
`
`Petitioner Digilock Asia Ltd. (“Digilock” or “Petitioner”) hereby petitions to cancel in part Reg.
`
`No. 3524558 (the “Registration”) for the mark CLEO (the “CLEO” Mark”) owned by Respondent and
`
`Registrant Roser Co., Ltd. (“Roser” or “Respondent”). As grounds for its petition to cancel, Petitioner
`
`alleges upon personal knowledge with respect to itself and its own acts, and upon information and belief
`
`as to all other matters, as follows:
`
`1.
`
`2.
`
`Petitioner is a limited liability company formed under the laws of Hong Kong.
`
`According to the records of the United States Patent and Trademark Oice (USPTO),
`
`Respondent is a corporation formed under the laws of the Republic of Korea with an address of record of
`
`400, Nae-ri, Apryang-myeon, Gyongsan-si, Gyongsangbuk-do, Republic of Korea.
`
`3.
`
`Petitioner is a manufacturer, distributor, and seller of goods including security locks, such
`
`as security locks, electronic locks, and electromechanical locks. Petitioner’s products include locks for
`
`use in securing lockers in public facilities, among other applications. Petitioner has a bona ide intent to
`
`use the CLEO Mark in connection with, as relevant and without limitation, security locks operating via
`
`electromechanical means for use in securing valuables.
`
`4.
`
`On August 18, 2022, Petitioner iled U.S. Application Serial No. 97554055 (“Petitioner’s
`
`Application”) for the mark CLEO, on an intent-to-use basis under § 1(b), in connection with
`
`electromechanical locks in Class 9 (“Petitioner’s Goods”). A copy of the TSDR printout of the current
`
`status and details of Petitioner’s Application is attached as Exhibit 1.
`
`20826226.1
`
`1
`
`

`

`
`
`5.
`
`he USPTO Examination Division refused registration of Petitioner’s Application in
`
`relevant part under § 2(d) on the basis of an asserted likelihood of confusion with the Registration,
`
`speciically as to the goods in the Registration “metal building ittings, namely, metal locks”
`
`(“Respondent’s Relevant Goods”), including most recently in a inal oice action issued March 25, 2024.
`
`Copies of the USPTO’s noninal and inal oice actions are attached as Exhibit 2.
`
`6.
`
`Accordingly, Petitioner is entitled to bring a statutory cause of action to cancel the
`
`Registration in part.
`
`7.
`
`Upon information and belief, Respondent is engaged in the manufacture and sale of
`
`building materials consisting of rooing systems for residential construction.
`
`8.
`
`On April 11, 2007, Respondent iled the application which matured into the Registration,
`
`Serial No. 76675379, on an intent-to-use basis under § 1(b), including for the goods “metal building
`
`ittings” among other things. he application was signed by Petitioner’s attorney of record at the time.
`
`9.
`
`On August 3, 2007, the USPTO issued a noninal oice action which, in relevant part
`
`among other things, refused registration for the goods “metal building ittings” as indeinite and unclear.
`
`he USPTO examining attorney suggested Respondent amend this item to specify the common
`
`commercial or generic name for the goods, including as just one proposed suggestion, “metal building
`
`ittings, namely, {specify the ittings, e.g., metal locks}.” Likely because this noninal oice action was
`
`made without the beneit of specimens provided by Respondent, there was no information made of record
`
`that the examining attorney actually considered any speciic evidence or context surrounding Respondent
`
`and its business beyond the remainder of the identiication of goods when suggesting the limitation “metal
`
`locks.”
`
`10.
`
`On August 21, 2007, in relevant part, Respondent amended the goods in the application
`
`literally as suggested by the examining attorney to “metal building ittings, namely, metal locks,” without
`
`further modiication or speciication.
`
`11.
`
`On November 20, 2007, the application published for opposition. On February 12, 2008,
`
`the USPTO issued a Notice of Allowance (“NOA”) for the following goods:
`
`20826226.1
`
`2
`
`

`

`
`
`Metal building materials, namely, metal building panels, metal rooing
`panels, metal rooing lashing, metal building lashing boards; metal
`building ittings, namely, metal locks; metal chimney pots; metal
`hardware, namely, metal tension links; metal stoppers for industrial
`packaging containers; metal window frames; and steel sheets for building
`construction.
`
`he deadline to ile a statement of use therefore fell on August 12, 2008.
`
`12.
`
`Respondent iled no extensions of time to ile a statement of use. On August 12, 2008—
`
`the last possible day to do so—Respondent iled its Statement of Use, declaring that all goods in the NOA
`
`were in use, with declared dates of irst use at least as early as “May, 2008.” he Statement of Use was
`
`signed by Respondent’s attorney of record at the time.
`
`13. he USPTO issued the Registration on October 28, 2008 in connection with the same
`
`goods as in the NOA.
`
`14.
`
`Respondent iled declarations of use and a renewal under §§ 8 and 9, as relevant, on
`
`August 20, 2014, and July 29, 2018. In both declarations of use, Respondent declared that all goods in the
`
`Registration were in use in commerce, and has never at any time deleted any goods from the Registration.
`
`15.
`
`Upon information and belief, Respondent is a manufacturer of components for rooing
`
`systems and has sold rooing systems under various marks, including the CLEO Mark, in the United
`
`States.
`
`16.
`
`Upon information and belief, in connection with CLEO Mark, Respondent has sold in the
`
`United States rooing systems comprising rooing shingles and associated installation equipment.
`
`17.
`
`Under the ordinary commercial deinition and understanding of Respondent’s Relevant
`
`Goods, Respondent does not, has not, and has never sold “metal building ittings, namely, metal locks” in
`
`United States commerce in connection with the CLEO Mark. Alternatively, Respondent has discontinued
`
`use in commerce of the CLEO Mark in connection with Respondent’s Relevant Goods with the intent not
`
`to resume such use, or Respondent’s nonuse began more than three years ago. Speciically, none of the
`
`goods sold or used in commerce by Respondent comprise “metal locks.”
`
`20826226.1
`
`3
`
`

`

`
`
`18.
`
`Alternatively, the “metal locks” with which Respondent has at all relevant times used the
`
`CLEO Mark consist only of interlocking tiles for home rooing systems, and no more.
`
`First Cause of Action
`Expungement (§ 14(6))
`
`19.
`
`Upon information and belief, Respondent has never used the CLEO Mark in United
`
`States commerce in connection with Respondent’s Relevant Goods, “metal building ittings, namely,
`
`metal locks” at any time prior to the iling of this Petition.
`
`20. he Registration issued more than three years ago.
`
`21.
`
`Accordingly, the Registration is subject to partial cancellation of Respondent’s Relevant
`
`Goods on grounds of expungement under § 14(6).
`
`Second Cause of Action
`Abandonment (§ 14(3))
`
`22.
`
`Upon information and belief, Respondent has discontinued use of the CLEO Mark in
`
`United States commerce in connection with Respondent’s Relevant Goods with an intent not to resume
`
`such use.
`
`23.
`
`Upon information and belief, Respondent’s nonuse of the CLEO Mark in United States
`
`commerce in connection with Respondent’s Relevant Goods began more than three years prior to the
`
`iling of this Petition. Alternatively, Respondent’s nonuse of the CLEO Mark in United States commerce
`
`in connection with Respondent’s Relevant Goods began less than three years ago with an actual intent not
`
`to resume such use.
`
`24.
`
`Accordingly, the Registration is subject to partial cancellation of Respondent’s Relevant
`
`Goods on grounds of abandonment under §§ 14(3) and 45.
`
`hird Cause of Action
`Restriction of Respondent’s Relevant Goods (§ 18)
`
`25.
`
`Upon information and belief, Respondent uses the CLEO Mark in United States
`
`commerce in connection with metal building ittings comprising metal components with interlocking
`
`capabilities for rooing systems.
`
`20826226.1
`
`4
`
`

`

`
`
`26.
`
`Accordingly, the identiication of Respondent’s Relevant Goods is ambiguous or overly
`
`broad and not speciic to the goods with which Respondent actually uses the CLEO Mark. As currently
`
`identiied in the Registration, Respondent’s Relevant Goods (again, “metal building ittings, namely metal
`
`locks”) are deined much more broadly than the goods with which Respondent actually uses the CLEO
`
`Mark, and could be read to include Petitioner’s Goods, electromechanical locks.
`
`27.
`
`Amendment by restriction of Respondent’s Relevant Goods to identify only and no more
`
`than the goods actually used by Respondent would avoid a inding of a likelihood of confusion between
`
`Respondent’s Relevant Goods and Petitioner’s Goods.
`
`28.
`
`Accordingly, restriction by amendment of the Registration as to Respondent’s Relevant
`
`Goods by the following commercially-signiicant limitation is warranted: “metal building ittings, namely,
`
`metal locks being interlocking tiles for home rooing systems.”
`
`29. his restricting amendment excludes only goods with which Respondent does not use the
`
`CLEO Mark in United States commerce, is commercially signiicant, and will avoid a inding of
`
`likelihood of confusion with Petitioner’s Goods in Petitioner’s Application. Petitioner therefore
`
`respectfully request the Board enter this amendment under § 18.
`
`30.
`
`Alternatively, Petitioner respectfully requests the Board enter an alternative amendment
`
`to Respondent’s Relevant Goods to exclude all goods not used by Respondent and avoid a likelihood of
`
`confusion with Petitioner’s Goods, based on proof at trial.
`
`Conclusion
`
`31.
`
`Accordingly, Respondent’s continued registration as to Respondent’s Relevant Goods is
`
`injurious or damaging to Petitioner under § 14. Petitioner respectfully requests that the Petition to Cancel
`
`be sustained and that U.S. Reg. No. 3524558 as to “metal building ittings, namely, metal locks” be
`
`canceled or, in the alternative, restricted as provided in this Petition.
`
`
`
`
`
`20826226.1
`
`5
`
`

`

`
`
`
`
`
`Respectfully submitted,
`
`PETITIONER DIGILOCK ASIA LTD.
`
`
`By:
`/s/ Justin hiele
` Noel M. Cook
`ncook@hansonbridgett.com
`ttabilings@hansonbridgett.com
`Justin P. hiele
`Jthiele@hansonbridgett.com
`Attorneys for Petitioner Digilock Asia Ltd.
`
`HANSON BRIDGETT LLP
`425 Market Street, 26th Floor
`San Francisco, California 94105
`Tel.: (415) 777-3200
`
` Date: May 14, 2024
`
`20826226.1
`
`6
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-05-14 13:46:40 EDT
`
`Mark: CLEO
`
`US Serial Number: 97554055
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 18, 2022
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: A final Office action refusing registration has been sent (issued) because the applicant neither satisfied nor overcame all requirements
`and/or refusals previously raised. The applicant may respond by filing (1) a request for reconsideration; and/or (2) an appeal to the
`Trademark Trial and Appeal Board. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this
`page.
`
`Status Date: Mar. 25, 2024
`
` 
`
`Mark Literal
`Elements:
`
`CLEO
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Electromechanical locks
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`Basis Information (Case Level)
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Digilock Asia Ltd.
`
`Owner Address: Flat B, 27th Floor Grandion Plaza
`No. 932 Cheung Sha Wan Road
`
`

`

`Lai Chi Kok HONG KONG
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`HONG KONG
`
`Attorney/Correspondence Information
`
`Attorney Name: Noel M. Cook
`
`Attorney Primary
`Email Address:
`
`ipfilings@hansonbridgett.com
`
`Attorney of Record
`
`Docket Number: 36587.1
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Noel M. Cook
`Hanson Bridgett LLP
`425 Market Street, 26th Floor
`San Francisco, CALIFORNIA UNITED STATES 94105
`
`Phone: 415-995-5038
`
`Correspondent e-
`mail:
`
`ipfilings@hansonbridgett.com NCook@hansonbri
`dgett.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Mar. 25, 2024
`
`NOTIFICATION OF FINAL REFUSAL EMAILED
`
`Mar. 25, 2024
`
`FINAL REFUSAL E-MAILED
`
`Mar. 25, 2024
`
`FINAL REFUSAL WRITTEN
`
`Jun. 30, 2023
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Jun. 29, 2023
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jun. 29, 2023
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Apr. 14, 2023
`
`APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED
`
`Apr. 14, 2023
`
`APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED
`
`Apr. 12, 2023
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Apr. 12, 2023
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Apr. 12, 2023
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Jan. 23, 2023
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Jan. 23, 2023
`
`NON-FINAL ACTION E-MAILED
`
`Jan. 23, 2023
`
`NON-FINAL ACTION WRITTEN
`
`Jan. 17, 2023
`
`ASSIGNED TO EXAMINER
`
`Aug. 23, 2022
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Aug. 22, 2022
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: FIONDA, LAURA ELIZABET
`
`Current Location: TMEG LAW OFFICE 108 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 108
`
`File Location
`
`Date in Location: Mar. 25, 2024
`
`Proceeding
`Number
`
`

`

`EXHIBIT 2
`EXHIBIT 2
`
`
`
`
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Russell Petersen(russell.petersen@digilock.com)
`
`U.S. Trademark Application Serial No. 97554055 - CLEO - T22-04
`
`January 23, 2023 10:57:48 AM EST
`
`Sent As:
`
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-www-yalehome-com-us-en-products-padlocks-16744872670801
`screencapture-app-salsify-com-catalogs-513009c4-e967-489b-9e59-b2c66349c827-products-
`16744873224531
`screencapture-www-yalehome-com-us-en-products-keypads-and-smart-locks-
`16744875788761
`screencapture-shopyalehome-com-16744877074931
`screencapture-www-masterlock-com-products-bluetooth-electronic-locks-16744877998771
`screencapture-www-masterlock-com-products-padlocks-16744878470761
`screencapture-www-masterlock-com-products-door-hardware-16744880316761
`screencapture-shopyalehome-com-collections-door-lock-hardware-16744880785401
`screencapture-august-com-products-august-smart-lock-pro-connect-16744882275211
`screencapture-august-com-pages-front-door-hardware-16744884279461
`3524558
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 97554055
`
`Mark:  CLEO
`
`Correspondence Address:  
`RUSSELL PETERSEN
`SECURITY PEOPLE, INC., DBA DIGILOCK
`9 WILLOWBROOK CT
`PETALUMA CA 94954 UNITED STATES
`
`Applicant:  Digilock Asia Ltd.
`
`Reference/Docket No. T22-04
`
`Correspondence Email Address:  russell.petersen@digilock.com
`
`
`
`
`
`
`NONFINAL OFFICE ACTION
`
`Response deadline.  File a response to this nonfinal Office action within three months of the “Issue
`date” below to avoid abandonment of the application. Review the Office action and respond using one
`of the links to the appropriate electronic forms in the “How to respond” section below.
`
`

`

`Request an extension.  For a fee, applicant may request one three-month extension of the response
`deadline prior to filing a response. The request must be filed within three months of the “Issue date”
`below. If the extension request is granted, the USPTO must receive applicant’s response to this letter
`within six months of the “Issue date” to avoid abandonment of the application.
`
`Issue date:  January 23, 2023
`
`The referenced application has been reviewed by the assigned trademark examining attorney. 
`Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R.
`§§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`SUMMARY OF ISSUES that applicant must address:
`
`
`•
`
`Trademark Act Section 2(d) Refusal – Likelihood of Confusion
`
`
`TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
`U.S. Registration No. 3524558. 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. 
`
`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 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 "CLEO" in standard characters, and registrant’s mark is
`"CLEO" in standard characters. 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.
`
`Comparison of the Goods 
`
`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).
`
`Registrant’s goods, as relevant, are identified as “metal building fittings, namely, metal locks”.
`
`Applicant’s goods are identified as “electromechanical locks ”.
`
`The fact that the goods and/or services of the parties differ is not controlling in determining likelihood
`of confusion.  The issue is not likelihood of confusion between particular goods and/or services, but
`likelihood of confusion as to the source or sponsorship of those goods and/or services.  In re Majestic
`Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992
`F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
`
`The attached Internet evidence, consisting of screenshots from Masterlock.com, August,com,
`and shopyalehome.com, yalehome.com, and salsify.com establishes that the same entity commonly
`manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or
`services under the same mark and establishes that the goods are complementary in terms of purpose and
`function. Specifically, companies that make electromechanical locks often also offer the metal locks in
`the nature of building fittings for the complementary purpose of securing buildings.  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).
`
`Trademark Act Section 2(d) Refusal – Conclusion
`
`The marks are similar in sound and appearance, and the goods and/or services are highly related.  It is
`likely that a consumer could mistakenly believe applicant’s goods are offered by registrant or vice
`versa.  For these reasons, as detailed supra, registration is refused pursuant to Section 2(d) of the
`Trademark Act.
`
`Trademark Act Section 2(d) Refusal – Response Options
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
`submitting evidence and arguments in support of registration.
`
`ASSISTANCE
`
`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. 
`
`How to respond.  File a response form to this nonfinal Office action or file a request form for an
`extension of time to file a response.  
`
`
`
`/Laura Fionda/
`Laura E. Fionda
`Trademark Examining Attorney
`Law Office 108
`(571) 272-7897
`Laura.Fionda@USPTO.GOV
`
`
`
`RESPONSE GUIDANCE
`
`•
`
`Missing the deadline for responding to this letter will cause the application to abandon.  A
`response or extension request must be received by the USPTO before 11:59 p.m. Eastern Time
`of the last day of the response deadline.  Trademark Electronic Application System (TEAS)
`system availability could affect an applicant’s ability to timely respond.  For help resolving
`technical issues with TEAS, email TEAS@uspto.gov.
`
`•
`
`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.
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Noel M. Cook(ipfilings@hansonbridgett.com)
`
`U.S. Trademark Application Serial No. 97554055 - CLEO - - 36587.1
`
`March 25, 2024 06:15:23 PM EDT
`
`Sent As:
`
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-www-homedepot-com-p-Schlage-Camelot-Satin-Nickel-Electronic-Keypad-
`Door-Lock-with-Accent-Handle-and-Flex-Lock-892174-202255171-17113896204201
`screencapture-www-collinsdictionary-com-dictionary-english-fitting-17113902236021
`screencapture-www-amocam-com-products-electronic-door-locks-1073-html-
`17113906606881
`screencapture-www-inoxsmart-com-sliding-doors-17113956733511
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 97554055
`
`Mark:  CLEO
`
`Correspondence Address:  
`Noel M. Cook
`Hanson Bridgett LLP
`425 Market Street, 26th Floor
`San Francisco CA 94105
`UNITED STATES
`
`Applicant:  Digilock Asia Ltd.
`
`Reference/Docket No. 36587.1
`
`Correspondence Email Address:  ipfilings@hansonbridgett.com
`
`
`
`
`
`
`FINAL OFFICE ACTION
`
`Response deadline.  File a request for reconsideration of this final Office action and/or a timely appeal
`to the Trademark Trial and Appeal Board (TTAB) within three months of the “Issue date” below to
`avoid abandonment of the application.  Review the Office action and respond using one of the links
`below to the appropriate electronic forms in the “How to respond” section below.  
`
`Request an extension.  For a fee, applicant may request one three-month extension of the response
`deadline prior to filing a response and/or an appeal.  The request must be filed within three months of
`the “Issue date” below.  If the extension request is granted, the USPTO must receive applicant's
`response and/or appeal within six months of the “Issue date” to avoid abandonment of the application.  
`
`

`

`Issue date:  March 25, 2024
`
`INTRODUCTION
`
`This Office action is in response to applicant’s communication filed on June 29, 2023.
`
`In a previous Office action dated January 23, 2203, the trademark examining attorney refused
`registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion
`with a registered mark.
`
`The trademark examining attorney maintains and now makes FINAL the Trademark Act Section 2(d)
`refusal. This is the only outstanding refusal or requirement against the application. See 37 C.F.R.
`§2.63(b); TMEP §714.04.
`
`TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
`U.S. Registration No. 3524558. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
`§§1207.01 et seq.  See the copy of the registration attached to the first Office action.
`
`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 curi