UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/024423
MARK: FENIX
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Su Huiyun, Yang Jianxu
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
On June 8, 2007, action on this application was suspended pending the disposition of Application Serial Nos. 78817579, 78820966, 78793683 and 78796284. The referenced prior-pending applications have since registered or abandoned. Therefore, registration is refused as follows.
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. 3352135, 3357630, 3266358 and 3191514. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
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 registered marks are:
1. Reg. No. 3352135 for PMI PHOENIX MANUFACTURING, INC. and design for “Evaporative air coolers” and “Manufacturing for others in the field of evaporative cooling units”.
2. Reg. No. 3357630 for PHOENIX QUICK CHAMBER for “Drying chambers for moisture damage restoration and mold remediation”.
3. Reg. No. 3266358 for PHOENIX for “Hot water heaters; hot water tanks; and water heater systems comprising tanks, thermostats and heating elements sold together as a unit.”
4. Reg. No. 3191514 for PHOENIX for “ventilating and architectural louvers.”
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 each comprise in whole or dominant literal part the word PHOENIX, or a phonetically identical variation thereof, in connection with lighting, heating or environmental control apparatus.
Applicant’s mark FENIX in stylized form is highly similar to the cited marks visually and may be pronounced in the identical manner to dominant literal element of each of the cited marks. Similarity in sound alone is sufficient to find a likelihood of confusion. 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).
In addition, the applicant’s identification of goods encompasses products which are the same or closely related to those covered by the cited registrations. Applicant’s identification is notable in its breadth and appears intended to encompass a wide spectrum of goods classified in Class 11. Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrants’ more specific identifications, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
As a result, applicant’s goods must be interpreted as the same or closely related to those encompassed by the cited registrations. By way of example, applicant’s “air cooling apparatus” presumably encompasses goods related “evaporative air coolers” (Reg. No. 3352135) as well as goods related to “ventilating and architectural louvers” (Reg. No. 3191514). Similarly, applicant’s “heating installations” can be interpreted as encompassing the “drying chambers for moisture damage restoration and mold remediation” (Reg. No. 3357630) and “hot water heaters; hot water tanks; and water heater systems comprising tanks, thermostats and heating elements sold together as a unit” (Reg. No. 3266358). Given this level of potential similarity, applicant’s goods and those in the cited registrations are likely to move in the same channels of trade to the same classes of purchasers. 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.
Continued Sec. 2(d) Refusals
The refusal under Sec. 2(d) discussed in the initial Office action are continued with the exception of citations of Reg. Nos. 2435033 and 1473035 which have since cancelled.
ENTITY OF APPLICANT
Applicant identifies itself as “Su Huiyun, Yang Jianxu” and its entity as an individual citizen of China. Applicant must clarify whether the name refers to two separate joint individual applicants. If so, applicants must confirm whether both identified joint individual applicant’s are Chinese citizens.
IDENTIFICATION OF GOODS
Applicant has amended its identification as follows:
“Lamps; pocket flashlights; bicycle lights; electric cooking stoves and ovens; refrigerators; air cooling apparatus; hot air apparatus; heating installations; bath installations; disinfectant apparatus,” in Class 11.
The amended identification continues to contain wording which is unacceptable as indefinite. Applicant must clarify its goods as indicated below, bearing in mind that the identification may not be amended to reclassify services or to add additional classes to the application. In other words, indefinite language may only be amended to identify goods/services within the relevant original class. In particular:
The identification may be amended in the following manner, if accurate.
“Lamps; pocket flashlights; bicycle lights; electric cooking stoves and ovens; refrigerators; air cooling apparatus; hot air blowers; heating installations; bath installations; disinfectant apparatus, namely, disinfectant dispensers for toilets” in Class 11.
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.
ATTORNEY OF RECORD
Applicant’s correspondence filed on April 24, 2007, was signed by an attorney identified as “attorney of record.” The response includes a verified declaration that the signer is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions. However, the record contains no appointment of an attorney authorized to practice before the Office under 37 C.F.R. §10.14. This is notable because when an authorized attorney transmits and/or signs a document on behalf of an applicant, that attorney is recognized as applicant’s representative. 37 C.F.R. §2.17(a), (c); TMEP §602.01. Moreover, all future correspondence by the Office normally will be sent to this attorney. 37 C.F.R §2.18(a); TMEP §603.01. Therefore, in order to complete the application record, applicant must either provide a power of attorney and/or the attorney’s address for correspondence. TMEP §603.01.
Applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11.
Please be advised that the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:
(1) Attorneys in good standing with the bar of any U.S. court or the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney will be considered an incomplete response. TMEP §§602, 602.03, 603.05.
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
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.