UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 79/027138
APPLICANT: Opel Eisenach GmbH
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: INSIGNIA
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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.
|
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 79/027138
INTERNATIONAL REGISTRATION NO. 0817292
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, 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. federal 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.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
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 good(s), so resembles the marks in U.S. Registration Nos. 2480096 and 2570432 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. 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 for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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).
The applicant has applied to register the mark, INSIGNIA in standard characters for motor vehicles and their parts.
The registered marks appear to be owned by the same registrant:
- INSIGNIA in typed drawing for vehicle tires (Reg. No. 2480096);
- INSIGNIA SL in typed drawing for vehicle tires (Reg. No. 2570432).
The applicant and registrant’s mark, INSIGNIA (Reg. No. 2480096), are identical.
The applicant’s and registrant’s marks create a similar commercial impression because they share the identical wording INSIGNIA (Reg. No. 2570432). The only difference between the marks is applicant’s deletion of the letters “SL” from the registered mark. However, the mere deletion of wording or letters from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
In the instant case, the applicant’s broadly identified “motor vehicles and their parts” clearly includes all motor vehicle parts. Thus, applicant’s identification of “parts” encompasses registrant’s specifically identified motor vehicle part, namely “vehicle tires.”
Furthermore, the Trademark Trial and Appeal Board has consistently found that the use of identical or similar marks on automobiles and on tires is likely to cause confusion. In re Jeep Corp., 222 USPQ 333 (TTAB 1984) (LAREDO for land vehicles and structural parts therefor confusingly similar to LAREDO for pneumatic tires); Ford Motor Company v. Hi-Performance Motors, Inc., 186 USPQ 64 (TTAB 1975) (representation of a coiled snake for automobile tires likely to cause confusion with COBRA for automobiles and automobile components); In re McCreary Tire & Rubber Company, 183 USPQ 256 (TTAB 1974) (THE PARK AVENUE for tires likely to cause confusion with PARK AVENUE for automobiles); Jetzon Tire & Rubber Corporation v. General Motors Corporation, 177 USPQ 467 (TTAB 1973) (GEMINI and GMINI for automobiles likely to cause confusion with GEMINI for vehicle tires). Therefore, applicant’s broadly identified “motor vehicles” remains highly related to registrant’s “vehicle tires.”
The marks are highly similar. The goods are highly related. The similarities of the marks and relatedness of the goods are so great as to create a likelihood of confusion among consumers. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Accordingly, the mark is refused registration on the Principal Register under Section 2(d).
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.
IDENTIFICATION OF GOODS
The following wording in the identification of goods requires clarification because it fails to identify the goods with sufficient particularity. TMEP §1402.01.
- motor vehicles
- parts.
Here, applicant must specifically identify the type of “motor vehicles,” e.g., “recreational vehicles, namely, campers,” “amphibious vehicles,” “land vehicles,” and “motorized vehicles, namely go-carts” are all classified in Class 12.
Furthermore, applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. Indefinite terms such as “parts” must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a).
For example, “land vehicle parts, namely, transmissions, wheels, drive gears and axles” and “motor vehicles, namely, automobiles and structural parts therefor” are classified in Class 12.
However, 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. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications. 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.
CLASSIFICATION ADVISORY
Applicant should note that the international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods 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).
SIGNIFICANCE OF MARK
Applicant must specify whether “INSIGNIA” has any significance in the trade or industry. 37 C.F.R. §2.61(b).
ENTITY
Applicant has omitted its entity type and citizenship. Therefore, applicant must specify its entity type and citizenship, e.g., an applicant can apply as an individual, a partnership, a corporation or a joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. If applicant is an individual, then applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i). If applicant is a corporation or association, then applicant must set forth the U.S. state or country (for foreign applicants only) under whose laws applicant is organized. 37 C.F.R. §2.32(a)(3)(ii). If applicant is a partnership or joint venture, then applicant must list the names and the national citizenship or the U.S. state or country (for foreign applicants only) of organization or incorporation of all the general partners or joint venturers, as well as specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §§2.32(a)(3)(ii) and (iii).
If applicant has any questions or needs assistance in responding, applicant is encouraged to telephone or email the assigned examining attorney.
USPTO
/kelly a choe/
Kelly A Choe
Trademark Attorney
Law Office 113
Telephone: 571. 272.9429
Response: www.gov.uspto.report/teas
HOW TO RESPOND TO THIS OFFICE ACTION:
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.