To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`ONE App Limited (docketing@anovalaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 87629421 - MAX - 00102.8020
`
`1/11/2018 8:23:42 AM
`
`ECOM103@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*87629421*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   87629421
`
`           
`
`MARK: MAX
`
`CORRESPONDENT
`ADDRESS:
`  
`       SHERRY WU
`
`       ANOVA LAW
`  
`GROUP, PLLC
`
`         21495 RIDGETOP
`CIRCLE
`
`           STERLING, VA
`20166
`
`    
`
`   
`
`APPLICANT: ONE App
`Limited
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`NO:       
`
`  00102.8020
`
`   
`
`CORRESPONDENT
`
`E-MAIL ADDRESS:       
`
`docketing@anovalaw.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 1/11/2018
`
` 
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`

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`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:
`
`Section 2d refusal for likelihood of confusion with a prior registration
`Entity
`
`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.    5270548.  Trademark
`Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration. The examining attorney notes that the name of
`applicant and registrant are identical. However, applicant is identified as a “corporation of China” whereas registrant is identified as a
`“corporation of Hong Kong.”     Hong Kong and China have separate laws and company registry systems, therefore, a corporation of Hong
`Kong
`is
`not
`necessarily
`also
`a
`corporation
`of China
`and
`these must
`be
`considered
`different
`entities.  
`See
`eg.
`http://www.pathtochina.com/types_of_business_china.html   
`https://www.chinalawblog.com/2016/03/a-hong-kong-company-is-not-a-mainland-
`china-company-and-a-hong-kong-trademark-is-not-a-mainland-china-trademark.html
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be
`confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d). 
`Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir.
`2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be
`considered.”   Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re
`Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors,
`such as similarity of the marks and relatedness of the goods [and/or services].”   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)); see 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 Davia, 110 USPQ2d 1810, 1812 (TTAB
`2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
`1988)); TMEP §1207.01(b).
`
`Applicant’s mark is MAX.   The cited registered mark is MAX and design.   The marks are identical except for the design element in the cited
`registration.
`
`When evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and/or
`services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119
`USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP
`§1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is
`accorded greater weight in determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911
`
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`(citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).     In this case, the
`deletion of the design element is insufficient to obviate the likelihood of confusion.
`
`Thus, 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).
`
`The goods are identical.
`
`Accordingly, the goods would be provided to the same class of purchasers and encountered under circumstances leading one to mistakenly
`believe the goods originate from the same source.
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in
`support of registration.
`
`NOTE:
`
`If the mark in the cited registration has been assigned to applicant, applicant may provide evidence of ownership of the mark by satisfying one of
`the following:
`
`(1)      
`
`Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments
`can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been
`duly recorded.
`
`(2)      
`
`Submit copies of documents evidencing the chain of title.
`
`(3)      
`
`Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the
`owner of U.S. Registration No. 5270548.”   To provide this statement using the Trademark Electronic Application
`System (TEAS), use the “ Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on
`to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S.
`registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a
`signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
`
`TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
`
`Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).
`
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`If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
`
`Entity
`
`Applicant’s business name includes the foreign business designation “limited”; however, applicant set forth “corporation” as the legal entity in
`the application.  This business designation is generally considered the equivalent of a “Limited Company or Limited Liability Company.”   See
`TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). 
`Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark
`
`Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See TMEP §803.03(i).  
`
`Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an
`explanation as to why the identified entity type is more similar to a “corporation” in this instance than to the legal entities listed in TMEP
`Appendix D.  See id.
`
`If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused
`because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who
`owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-
`mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
`this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-
`.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in
`this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02,
`709.06.
`
`   
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
`Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
`and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations,
`TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without
`
`incurring this additional fee.     
`
`/Rebecca Gilbert/
`
`Rebecca Gilbert
`
`Examining Attorney
`
`Law Office 103
`
`571-272-9431
`
`rebecca.gilbert@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`
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`

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`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
` 
` 
` 
`  
`

`

`Pfint:Jan11,201fl
`
`87310504
`
`DESIGN MARK
`
`serial Number
`8T310504
`
`Status
`REGISTERED
`
`Word Mark
`MAX
`
`Standard Character Mark
`No
`
`Registration Number
`5210548
`
`Date Registered
`zalixaaxzz
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`[3] DESIGN PLUS WORDS, LETTERS ANonR NUMBERS
`
`Owner
`ONE App Limited CORPORATION HONG KONG Room 20A, Kiu Fu Commercial
`Building 300 Lockhart Road, Wan Chai Hong Kong HONG KONG
`
`GoodsfServiees
`Class Status -- ACTIVE.
`
`IC 009.
`
`US
`
`021 023 026 036 038.
`
`G & S:
`
`Computer antivirus software: computer security and privacy software;
`computer software for the creation of firewalls; computer software for
`system cleaning and optimization; Computer application software for
`mobile phones, namely, software for erasing installed caches and
`residual files, for managing applications and background tasks, for
`antivirus protection, for security and privacy protection, and for
`managing user history: Computer application software for tablet
`computers, namely, software for erasing installed caches and residual
`files, for antivirus protection, for security and privacy protection,
`for managing applications and background tasks, and for managing user
`history; providing downloadable software for erasing installed caches
`and residual fileslIr for managing applications and background tasks,
`and for managing user history. First Use: ZOlTXOlXOB. First Use In
`Commerce: 201?}01f03.
`
`Description of Mark
`
`

`

`Print: Jan 11, 2013
`
`87310504-
`
`The mark consists of a shield with letters "W" approximately
`symmetrically located in the middle.
`
`Colors Claimed
`Color is not claimed as a feature of the mark.
`
`Filing Date
`ZOZLWOUZB
`
`Examining Attorney
`PHILLIPS WENDELL
`
`Attorney of Record
`Sherry Wu
`
`

`

`
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`ONE App Limited (docketing@anovalaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 87629421 - MAX - 00102.8020
`
`1/11/2018 8:23:43 AM
`
`ECOM103@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 1/11/2018 FOR U.S. APPLICATION SERIAL NO. 87629421
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 1/11/2018 (or sooner if specified in the Office action).  A response
`transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
`response period.   For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead,
`the USPTO recommends that you respond online using the TEAS response form located at
`http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`
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`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
`
`  
`