Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  79/007066

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This responds to applicant’s communication dated July 19, 2005, wherein applicant 1) amended its identification of goods; 2) provided a revised transliteration of the mark; 3) inserted a claim of ownership to its prior U.S. trademark registration; and 4) addressed the refusal and potential refusals under Trademark Act. Sec. 2(d).  No. 3 is acceptable.  No. 2 is acceptable but requires additional clarification, as set forth below.  The requirement for an acceptable identification of goods is maintained and continued.

 

The refusal citing Registration No. 2882602 is withdrawn.  The citations of Application Nos. 76557604 and 78337714 are continued.  In this regard, the two applications have now issued to registration.  Accordingly, applicant’s mark is refused as follows:

 

SECTION 2(D) - LIKELIHOOD OF CONFUSION REFUSAL

 

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED HEREIN

 

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, so resembles the marks in U.S. Registration Nos. 2965819 and 2961446 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq.

 

The registered marks are E-LUX covering “lamps for laboratory use, namely, electron-beam pump lamps that light in the UV and VUV spectral range” and “treatment of materials, namely, removal of biological materials, coagulation of biological materials, engraving of articles of manufacture and removal of material from articles of manufacture, including to expose an underlying layer based on UV light” (Reg. No. 2965819); and ENLUX for “light emitting diodes” and “electric light bulbs” (Reg. No. 2961446).

 

Applicant’s mark ELUX is similar to the cited marks visually and phonetically.  The English portion of applicant’s mark may be pronounced in the same manner as the mark in Reg. No. 2965819) and differs from the mark in Reg. No. 2961446 by a single internal consonant.  The addition of Japanese characters to applicant’s mark does not significantly affect an analysis of confusing similarity.  When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).  Moreover, to the extent consumers will not comprehend the pronunciation of the Japanese characters, the English portion of applicant’s mark must be considered the dominant element.

 

In addition, the applicant’s identification of goods encompasses products which are the same or closely related to those covered by the cited registrations.  With respect to Reg. No. 2965819, both registrant and applicant have identified specialized lighting apparatus for research/laboratory use.  Applicant has attempted to characterize registrant’s goods as laser related, presumably to distinguish them from applicant’s own lighting goods.  Such a narrowing of registrant’s goods is not supported by the registration record. Nonetheless, even assuming registrant’s goods are intended for non-illumination tasks, their relatedness to applicant’s goods would remain. 

 

Since the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, 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).  For instance, applicant’s “light emitting diode light source apparatus for use in laboratory or research, light emitting diode” are presumed to encompass those for use any type of laboratory research, including that for which registrant’s goods are used.  In this regard, attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely lasers and light emitting diodes, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988). 

 

Turning to Reg. No. 2961446, applicant’s goods are identical to those of the registrant, namely, light emitting diodes and lighting apparatus and are presumed to be marketed and used in the same or related channels of trade.  For example, both the applicant’s and registrant’s products would likely be sold through electronics and laboratory suppliers and could be used in conjunction with other similar products.

 

The similarity of the goods also affects a comparison of the marks.  If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b). 

 

Given the similarities of the marks and the goods, consumers are likely to conclude that the goods are somehow related or emanate from the same source.  Accordingly, because confusion is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

TRANSLATION OF MARK

 

Applicant’s transliteration of the Japanese characters in the mark as ERUKUSU is acceptable.  The previous examiner’s mistransliteration of the mark as ERUKSU in the initial Office action was a typographical error.  Moreover, the examiner’s suggestion that the mark be translated as “the phonetic equivalent of ‘ELUX’ in English” was merely intended to indicate that the term has no translation and is simply the Japanese language form or approximation of the English mark. 

 

Although the applicant has confirmed that the Japanese characters have no translation, it has not provided a formal statement to this effect.  As an alternative to the previous examiner’s suggestion, the transliteration and translation statement may be worded as follows, if accurate:

 

“The non-Latin characters in the mark transliterate to "ERUKUSU," which has no English translation.”

 

IDENTIFICATION OF GOODS

 

The amended identification of goods contains indefinite language as well as certain goods which appear to be misclassified.  Applicant must clarify its goods as indicated below, bearing in mind that the identification may not be amended to reclassify goods or to add additional classes to the application.  In other words, indefinite language may only be amended to identify goods within the relevant original class.  To the extent misclassified goods fall within the scope of indefinite language already encompassed by another class, the latter class may be clarified to encompass the goods, if warranted.  In particular:

 

CLASS 7:

 

1. “Agricultural-products, namely, cultivation apparatus provided with a controllable light emitting diode light source for maintaining and improving the level of light in photosynthesis” - The nature of the “cultivation” should be clarified.  In addition, the wording “provided with” must be clarified to indicate that light source comprises a feature of the goods.  For instance, the wording may be amended as follows, if accurate:

 

“Agricultural-products, namely, sprout cultivation machines featuring a controllable light emitting diode light source for maintaining and improving the level of light in photosynthesis.”

 

2. “Fishing machines and implements having a light emitting diode light source for collecting fish and aquafarming” – The “machines” must be clarified to better indicate their nature or use within the fishing field.  The “implements” must be clarified to indicate their nature or use beyond possessing a light emitting diode light source for collecting fish and aquafarming, if any.  Applicant must ensure that the amended goods are properly placed within Class 7.   For instance, the wording may be amended as follows, if accurate:

 

“Fishing machines, namely, (specify, e.g., line haulers, fish hoisting machines, pole and line octopus fishing machines); fishing implements, namely, (specify, e.g., automatic pole and line fishing machines) incorporating a light emitting diode light source for collecting fish and aquatic farming.”

 

3. “Fish detectors having light emitting diodes” – The wording is unacceptable as indefinite and may represent a “fishing implement” properly classified outside of Class 7, e.g., sonar equipment for finding fish, in Class 9.  Applicant must delete the goods or amend them to identify goods in Class 7.

 

4. “Fish collecting lamps having a light emitting diode that are capable of attracting fish for use in the fishing industry; light sources having light emitting diodes used for use at fish preserves” – The wording identifies lighting apparatus outside of Class 7 and must be deleted.  To the extent the goods are in the nature of “electric lamps and other lighting apparatus” they may be clarified to reflect goods within the scope of applicant’s Class 11 goods, e.g., “electric lamps incorporating light emitting diodes for use in attracting fish for use in the fishing industry and in fish preserves,” in Class 11.   

 

CLASS 9:

 

1. “Incubator for plants” – The wording must be clarified to indicate incubators of a type properly identified in Class 9, e.g., “laboratory equipment in the nature of incubators for plants,” in Class 9.

 

CLASS 10:

 

1. “Medical apparatus and instruments, namely diagnostic apparatus and instruments using shadowless light” – The wording “apparatus and instruments” must be amended to clarify the nature or use of the goods, e.g., “medical apparatus and instruments, namely, apparatus for clinical diagnosis using shadowless light.”

 

2. “Surgical apparatus and instruments for use on illuminated areas” and “veterinary apparatus and instruments for illuminated areas” – The applicant must specify the common commercial name and/or purpose of the apparatus and instruments.  Applicant’s clarification that the goods are “for use on illuminated areas” is insufficient to convey the function of the goods.   For instance, the wording may be further clarified in the following manner, if accurate: “Surgical apparatus and instruments for use on illuminated areas, namely, (specify, e.g., electric scalpels incorporating lighting devices).”

 

3. “Medical supportive lights for hospitals” – The nature and use of the “supportive lights” is unclear.  Applicant must clarify the goods to indicate their common commercial name or function within Class 10, e.g., “sensory light therapy unit.”

 

CLASS 11:

 

1.      “Lighting apparatus having a light-emitting diode” – The common commercial name of the “apparatus” must be specified, e.g., “lamps incorporating light emitting diodes.”  If the goods have no commercial name, applicant must describe the purpose or use of the goods.

 

2.      “Interior lighting and fluctuation lighting” – Applicant must amend the wording to indicate the common commercial name of the lighting goods and/or their purpose or function, e.g., Interior lighting fixtures incorporating light emitting diodes” or “fluctuation lighting, namely, (specify, e.g., flashing strobe light apparatus) incorporating light emitting diodes.”

 

Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.

 

Moreover, the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  TMEP §§1401.03(d), 1401.04 and 1904.02(b).

 

For assistance with identifying 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.

 

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

 

/Steven M. Perez/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.