Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

On July 23, 2005, action on this application was suspended pending the disposition of Application Serial No. 78316241.  The referenced prior-pending application has since registered.  Therefore, registration is refused as follows.

 

I.          SEARCH OF THE OFFICE RECORDS

 

Application Refused--Section 2(d) Refusal—Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant's mark, when used on or in connection with the identified goods and/or services, so resembles the mark in U.S. Registration No. 3419710 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §1207.01 et seq. Please see the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant’s proposed mark is POWERBOOST; the registered mark is POWER BOOST.

 

Comparison of the Respective Marks

In a likelihood of confusion determination, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973); TMEP §1207.01(b).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB (1988); In re Mack, 197 USPQ 755 (TTAB 1977); see TMEP §§1207.01(b).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. See Racot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed Cir. 2000); Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The examining attorney refuses registration of the proposed mark POWERBOOST on the grounds that it will cause a likelihood of confusion with the registered POWER BOOST mark.  The applicant’s proposed mark so resembles the registered mark as to render confusion as to source likely.  Indeed, the marks are identical.  Similarity in sound alone has been found sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).  Because the applicant’s proposed mark so resembles the registered mark in relation to sound, appearance, and meaning, confusion as to source is likely.

 

Comparison of the Respective Goods and/or Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. On-line Careline Inc v. America Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

If the marks of the respective parties are identical or highly similar, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

The examining attorney refuses registration of the mark POWERBOOST because the channels of trade in which the applicant’s goods travel are similar to those used by the registrant.  The applicant’s goods are identified as “automotive jump starters and battery chargers.”  The goods named in the registration comprise “spark plug wire sets.”  The respective goods are likely to be purchased by consumers at automotive parts stores. 

 

Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

                                                           

When the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii).  In this case, the term automotive jump starter is broadly worded.  As such, the Office must presume that the applicant’s goods include all kinds of electrical starting devices for automobiles including batteries. 

 

In this case, the respective goods are related in that both are used to assist in starting an automobile engine.  As such, these goods are likely to be found in the same channels of trade, and thus, it is likely purchasers of these products will be confused as to their source.  As evidence that consumers are accustomed to a single source identifier in relation these goods, the examining attorney encloses nineteen (19) separate trademark registrations in which the same mark is used in relation to both spark plug wires and either battery chargers, engine starters, automotive batteries, or automotive battery wires.  These printouts have probative value to the extent that they serve to suggest that the identified products are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988). 

 

Given the similarity between the respective marks, the relatedness of the goods, and the similarity between the channels of trade for these goods, it is likely that consumers will be confused as to the ultimate source of these products and associate the registered mark with the applicant’s proposed mark.  Accordingly, the examining attorney refuses registration of the applicant’s proposed mark.

 

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.

 

II.        SUBSTANTIVE REFUSAL

 

REFUSAL CONTINUED--Section 2(e)(1)—Mark Is Merely Descriptive

Previously, the examining attorney refused registration on the Principal Register because the proposed mark merely described the goods identified in the application.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP §§1209.01(b), 1209.03 et seq.

 

In its response, the applicant claims that the term is suggestive because the good does not impact the operating power or energy of the internal combustion engine that moves the vehicle.  Not so.  The proposed mark immediately identifies the underlying purpose of the goods—to increase the electrical energy of the automotive battery.  Accordingly, the prior Section 2(e)(1) refusal is MAINTAINED and CONTINUED.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that merely identifies a group of users to whom the applicant directs its goods and/or services or merely describes an intended purchaser of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The applicant applied to register POWERBOOST for “automotive jump starters and battery chargers.”

 

The Term “POWERBOOST” is Descriptive

The applicant claims that the term is suggestive because the good does not impact the operating power or energy of the internal combustion engine that moves the vehicle.  While this might be true, the proposed mark still immediately identifies the underlying purpose of the goods—to increase the electrical energy or force of the vehicle’s battery.  The term POWER when used as a noun refers to “energy or force used to drive machinery or produce electricity” or “electricity made available for use;” when used as a verb it means to “provide energy to operate something: to supply a machine or tool with the energy it needs to operate means.” Encarta® World English Dictionary, North American Edition (2003). (See enclosed.)  The term “BOOST” means “to increase or raise.”  American Heritage Dictionary of the English Language 4th ed., (2000). (See enclosed.) 

 

The combination of terms comprising the mark presumably describe, name, or inform the public about certain characteristics, features, and/or benefits of the applicant’s goods.  Indeed, taken as a whole, the mark immediately conveys an idea regarding a feature or purpose of the goods the applicant will provide, namely, that the applicant’s battery chargers and automotive jump starters are specifically designed to increase the amount of electricity made available for an automobile to use, specifically designed to increase the force used to produce electricity, or specifically designed to increase the supply of a machine needs to operate. 

 

A term need not describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).  Because the proposed mark taken as a whole immediately denotes without conjecture or speculation, a significant characteristic or feature of the products the applicant will provide, the mark is descriptive of those identified goods.  Accordingly, the examining attorney refuses registration on the Principal Register pursuant to Section 2(e)(1) of Trademark Act because the mark merely describes the goods and/or services identified in the application.

 

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 on the Principal Register.

 

Supplemental Register Suggested

Although the examining attorney has refused registration on the Principal Register, the applicant may respond to the stated refusal under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.

 

Please Note:  A mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03. When an Section 1(b) application is successfully amended from the Principal Register to the Supplemental Register, the effective filing date of the application is considered to be the date the applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

III.       INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue(s):

 

NEW REQUIREMENT—Information Concerning The Goods Required

To permit proper examination of the application, the applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, the applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed description of the goods. 

 

In addition, the applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods.  If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, the applicant must describe in detail the nature, purpose and channels of trade of the goods. 

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

Failure to respond to a request for information can be grounds for refusing registration.  TMEP §814; see In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). 

 

REQUIREMENT CONTINUED--Applicant Improperly Identified the Goods and/or Services

The applicant has provided this Office with the following identification:

 

Automotive jump starters and battery chargers, in International Class 009.

In its January 19, 2005 response, the applicant submitted dictionary evidence of the term jumpstart and a webpage listing evidence showing another entity selling a battery jump starter.  Despite the applicant’s evidence, the wording “automotive jump starter” is indefinite.  The specific nature of the goods is not clear from the present record.  Based on the applicant’s description, the examining attorney cannot determine what the applicant’s “automotive jump starters” are—is the applicant producing automotive jump starter cables, jump starting devices that provide electrical charges to automotive batteries, or some other type of starting device?  The language the applicant currently uses fails to adequately describe these products such that the average person would readily understand what the goods are.  As such, the prior identification requirement is MAINTAINED and CONTINUED.

Futhermore, the term “automotive jump starter” is indefinite and needs clarification because it could include goods classified in other international classes. See TMEP §§1402.01, 1402.03.  Specifically, starter alternators and starters for motors and engines are goods properly listed in International Class 007.

 

The applicant must amend the recitation to specify the common, ordinary commercial name of the goods.  If there is no common commercial name for the products, the applicant must adequately describe the nature of the goods, using wording that would be generally understood by the average person.  See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.  In such a case, the applicant should describe the nature of the goods and their main purpose, as well as indicate the channel of trade, intended consumer and intended use(s). 

 

The applicant may amend the identification to substitute the following wording, if accurate:

 

Proposed identification for International Class 007:

 

Automotive jump starters, namely, _________________ [applicant must identify the product using is common commercial name e.g. starter alternators for automobiles, starters for motors and engines for automobiles].

 

Proposed identification for International Class 009:

 

Automotive jump starters, namely, _________________ [applicant must identify the product using is common commercial name e.g. automotive battery jump starters, automotive jump starter cables]; battery chargers.

 

PLEASE NOTE:  While an identification of goods or recitation of services can be amended only to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, the applicant may not amend the identification to include any products or services that are not within the scope of the goods and/or services originally set forth in the application or a previously accepted amendment thereto. TMEP §1402.06(b).

 

Online Identification Reference Provided By The USPTO

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Requirements For A Multiple-Class Application

If the applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on either: (1) an intent to use the mark in commerce under Trademark Act Section 1(b), (2) a foreign registration under Trademark Act Section 44(e), (3) or an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

 

(1)     Applicant must list the goods and/or services by international class; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Applicant’s Response

There is no required format or form for responding to an Office action.  When responding to this Office action, the applicant must make sure to respond in writing to each refusal and requirement raised.  If a refusal has issued, the applicant can argue against the refusal.  If a requirement has issued, the applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).  The response must be personally signed or the electronic signature manually entered by the applicant or someone with legal authority to bind the applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

To expedite prosecution of this application, the applicant is strongly encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 117

Telephone: 571-272-9706

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.