UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/456874
APPLICANT: Bombardier-Rotax GmbH & Co. KG
|
|
CORRESPONDENT ADDRESS: JONATHAN CUTLER BOMBARDIER RECREATIONAL PRODUCTS LEGAL GOODS DEPT. ST-BRUNO P.O. BOX 230 NORTON, VERMONT 05907-0230 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
|
MARK: E-TEC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: RT-00313-US1
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/456874
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2687217 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The applicant has applied to register the mark E-TEC.
The registered mark is ETEK.
Except for the use of the letter “k” in Registrant’s mark, the marks of the parties are virtually identical in sound, appearance, and connotation.
Furthermore, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). In this case, the applicant intends to use its mark on recreational vehicle engines, among other goods. Registrant uses its mark on electric motors for land vehicles, controllers and structural parts therefor, among other goods. The enclosed third-party registrations show that the same manufacturer commonly produces both electric motors and vehicle engines and the goods travel in the same channels of trade. Therefore, the relevant consumer encountering the marks in the marketplace could reasonably believe that the goods of the parties emanate from the same source.
The similarities between the marks and the relatedness of the goods of the parties create a likelihood of confusion. The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The identification of goods as “fuel injection systems” is unacceptable as indefinite. Applicant must specify the component of the systems. The applicant may adopt the following identification, if accurate: Fuel injection systems composed of injector valves, control panels, fuel consoles, fuel injectors, microprocessors controllers, and fuel delivery filters, hoses, regulators and meters for filtering, regulating, and metering, all for internal combustion engines, in Class 7.
The balance of the identification in Class 7 and the identification in Class 12 is acceptable as written.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Caroline Fong Weimer/
Examining Attorney
Law Office 115
(703) 308-9115 ext. 211
(703) 746-6179 (FAX)
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.