UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/061021
MARK: ROADSTER
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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: Dr. Ing. h.c. F. Porsche; Aktiengesellsc ETC.
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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.
INTERNATIONAL REGISTRATION NO. 0982424.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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 USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §§10.1(c), 10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, 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 is considered an incomplete response. See TMEP §§602.03, 712.03.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
Section 2(d) – Likelihood of Confusion Refusals
U.S. REGISTRATION NO. 2554366
THIS REFUSAL APPLIES TO CLASSES 9 AND 16 ONLY
Registration of the applied-for mark is refused in International Classes 9 and 16 because of a likelihood of confusion with the mark in U.S. Registration No. 2554366. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
The mark in U.S. Registration No. 2554366 is RAGTOPS & ROADSTERS for “bi-monthly magazine featuring convertible automobiles.”
Applicant’s proposed mark is ROADSTER for “paper, cardboard and goods made from these materials, not included in other classes; printed matter, books, posters, stickers; bookbinding material, photographs; stationery, particularly writing utensils; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks” and “glasses, sunglasses; computer software; protective helmets; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.”
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.
Comparison of the Marks
Relatedness of the Goods
Applicant’s identification of goods in International Classes 9 and 16 is broad and could include goods that are identical to, or highly similar to those identified by the registrant. Applicant’s identification of “paper, cardboard and goods made from these materials, not included in other classes; printed matter” in International Class 16 could a magazine featuring convertible automobiles. 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 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).
Given the similarity of the marks and the goods, prospective customers are likely to confuse the source of the respective goods. Accordingly, registration of applicant’s mark is refused in International Classes 9 and 16 under Section 2(d) of the Trademark Act.
U.S. REGISTRATION NO. 3485043
THIS REFUSAL APPLIES TO CLASS 9 ONLY
Registration of the applied-for mark is refused in International Class 9 because of a likelihood of confusion with the mark in U.S. Registration No. 3485043. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
The mark in U.S. Registration No. 3485043 is ROADSTER for “amplifiers for musical instruments.” Applicant’s proposed mark is ROADSTER for “glasses, sunglasses; computer software; protective helmets; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.”
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.
Comparison of the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
Applicant and registrant’s marks are identical.
Relatedness of the Goods
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, 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. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. 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).
Applicant’s identification of goods in International Class 9 includes the class heading. The purpose of class headings is to indicate the subject matter and general scope of each international class, but these headings are considered too broad for identifying goods or services in U.S. applications. See TMEP §§1401.08, 1402.01 et seq. Because applicant’s identification consists of a broad description of the subject matter of Class 9, it could include any of the goods in Class 9 such as applicant’s goods of “amplifiers for musical instruments.”
In this case, applicant’s goods are identified broadly. Therefore, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).
Given the identical marks and goods, prospective customers are likely to confuse the source of the respective goods. Accordingly, registration of applicant’s mark is refused under Section 2(d) of the Trademark Act.
Applicant must respond to the requirements set forth below.
Identification of Goods – Amendment Required
The wording “soaps” in the identification of goods is indefinite and must be clarified because the type of soap must be specified. See TMEP §§1402.01, 1402.03.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods in International Class 3, the classification specified in the application for these goods.
International Class 9
The goods include computer software; however, the wording used to describe the software is indefinite and must be clarified to indicate the purpose or function of the software. If the software is field-specific, applicant must also specify the field of use. TMEP §1402.03(d). Clarification of the purpose, function or field of use of the software is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
The identification includes the class heading for International Class 9. The purpose of class headings is to indicate the subject matter and general scope of each international class, but these headings are considered too broad for identifying goods or services in U.S. applications. See TMEP §§1401.08, 1402.01 et seq. Therefore, applicant must amend the goods to specify the common commercial or generic name for each product.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods in International Class 9, the classification specified in the application for these goods.
International Class 16
The wording “goods made from these materials, not included in other classes,” “office requisites (except furniture),” and “plastic materials for packaging (not included in other classes)” in the identification of goods is indefinite and must be clarified because applicant must list specific goods. See TMEP §§1402.01, 1402.03.
The wording “printed matter” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes such as printed circuit boards in Class 9 and printed textile labels in Class 24. See TMEP §§1402.01, 1402.03. Applicant must amend the identification to specify a type of printed matter in Class 16. If the goods are publications, the identification must include the common name of the type of publication, e.g., pamphlets, brochures, newsletters, journals, magazines, etc. Applicant must also specify the subject matter or field of use of the publications. TMEP §1402.03(e). Similarly, applicant must specify the subject matter of the goods “books.”
The wording “artists’ materials” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes, such as paints in Class 2. See TMEP §§1402.01, 1402.03.
The wording “instructional and teaching material (except apparatus)” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes, such as audio and video recordings in Class 9. See TMEP §§1402.01, 1402.03. Applicant must specify that the materials are “printed” and indicate the subject matter of the materials.
The identification of goods contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12. Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods in International Class 16, the classification specified in the application for these goods.
International Class 25
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b). Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10 and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods.
Sample Revised Identification
Applicant may adopt the following identification, if accurate. Applicant must fill in the blanks with wording that conforms to the guidance provided in the brackets.
International Class 3: Soaps, namely, _____ [specify type, e.g., bath soap, detergent soap, industrial soap]; perfumery, essential oils, cosmetics, hair lotions; dentifrices
International Class 9: Glasses, namely, _____ [specify type in Class 9, e.g., reading glasses, eye glasses, magnifying glasses], sunglasses; computer software, namely, _____ [specify function and specify field, if field-specific]; protective helmets; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking for supervision, life-saving and teaching apparatus and instruments, namely, _____ [specify common commercial name for goods, e.g., photographic cameras, surveyors’ levels, emergency signal transmittors]; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, _____ [specify common commercial name, e.g., electric transformers, electric switches, electrical distribution boxes]; apparatus for recording, transmission or reproduction of sound and images; magnetic data carriers, namely, _____ [specify if blank, or if pre-recorded, and subject matter if pre-recorded, e.g., pre-recorded magnetic data carriers featuring audio books], recording discs [specify type and if blank, or if pre-recorded, and subject matter if pre-recorded, e.g., blank recordable CDs and DVDs]; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus
International Class 16: Paper, cardboard and goods made from these materials, not included in other classes, namely, paper, cardboard and ____ [specify common commercial name for “goods made from these materials”, e.g., cardboard boxes, gift wrapping paper]; printed matter, namely, _____ [specify type and subject matter, e.g., periodicals in the field of automobiles], books in the field of _____ [specify subject, e.g., automobiles and driving], posters, stickers; bookbinding material, photographs; stationery, particularly writing utensils; adhesives for stationery or household purposes; artists' materials, namely, _____ [specify type, e.g., artists brushes, pencils and pastels]; paint brushes; typewriters and office requisites except furniture, namely, typewriters and _____ [specify type of requisite, e.g., rubber bands, adhesive tape dispensers]; instructional and teaching material except apparatus, namely, _____ [specify “printed” and subject matter, e.g., printed teaching materials in the field of driving and vehicle maintenance]; plastic materials for packaging not included in other classes, namely, _____ [specify type of material, e.g., plastic bags for packaging]; printers' type; printing blocks
International Class 25: Clothing, namely, _____ [specify type, e.g., shirts, pants, coats, dresses], footwear, headgear
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.
Applicant’s Entity Type and Citizenship Required
For example, applicant may specify that it is an “Aktiengesellschaft” or a “Joint Stock Company.” TMEP § 803.03(i) and Appendix D. Applicant must also set forth the country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04.
Claim of Ownership of Existing Registrations Required
If applicant is the owner of U.S. Registration Nos. 1955838, 2861240, 3334523, 3334676 and 3356207 (see attached registrations), then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 1955838, 2861240, 3334523, and others.
Comments
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the 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 should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind 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.
/April K. Roach/
Trademark Examining Attorney
Law Office 115
Phone: (571) 272-1092
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.