UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/072833
MARK: FLYER
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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: Biketec AG
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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. 1013106
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 who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).
37 C.F.R. §§11.1, 11.14; 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:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
Trademark Act Section 2(d) Refusal to Register
A likelihood of confusion determination requires a two-part analysis. First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
A. The Marks
The applicant seeks to register “FLYER,” and the registered marks are “NEW FLYER,” “NEW FLYER” AND DESIGN, “KINETIK NEW FLYER,” AND DESIGN, “ELECTRAFLYER,” “FLOVAL FLYER,” “LITTLE MISS FLYER,” “FALLS FLYER,” “NEW FLYER KINETIK” AND DESIGN, “FLYER KIDS R,” AND DESIGN, “HUCKINS FAIRFORM FLYER SYMBOL OF YACHTING PERFRECTION” AND DESIGN, “FLEXIBLE FLYER SINCE 1889” AND DESIGN, “FLEXIBLE FLYER,” “BANTAM FLYER,” “THE FLYER,” “AMERICAN FLYER,” “STARFLYER,” “FAIRFORM FLYER,” “WESTERN FLYER,” “FLYERS.” The marks are similar because they include the word FLYER. The only difference in the marks is the additional wording and/or design in the registered marks. This difference does not alter the commercial impression of the marks because when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). Further, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (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, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
B. The Goods/Services
The applicant uses its mark on “Protective helmets, sensors, automatic steering for vehicles, charging units for electric accumulators, storage batteries, electric apparatus and instruments included in this class; calculating machines, data processing equipment and computers; downloadable publications (Class 9); Lighting fixtures, lamps, lights, headlamps, reflectors for vehicles of all kinds; pocket lamps (Class 11); Vehicles, apart from aircraft; parts of vehicles and vehicle accessories included in this class; apparatus for locomotion by land, air or water; bicycles; parts of bicycles and accessories included in this class; electric motors for vehicles; motors for cycles (Class 11); Clothing, footwear, headgear (Class 25),” and the registered marks are used on sensors, headlights, buses, aircraft, bicycles, tricycles, boats, yachts, travel trailers, camping trailers, trucks for military use, and clothing. The goods/services of the parties are identical.
Based on the similarity of the marks and relatedness of the goods/services, consumers are likely to be confused by the marks into believing that the goods/services of the parties share a common source or sponsorship.
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.
Pending Conflicting Applications
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Requirements
Applicant must respond to the requirement(s) set forth below.
A. Identification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Therefore, any modification to this wording must identify goods and/or services in the classification specified in the application for these goods and/or services.
Class 9
Applicant must clarify the identification of goods by specifying the type of sensors (e.g., proximity sensors); specifying the type of automatic steering for vehicles (i.e., laser object detectors); indicating that the storage batteries are electric; specifying the electric apparatus and instruments included in this class by common commercial name; indicating that the downloadable publications are electronic and specifying their field of use. See TMEP §1402.01.
Class 11
Class 12
Applicant must clarify the identification of goods by specifying the items of clothing by common commercial name; and indicating that the headgear is headwear. See TMEP §1402.01.
B. Citizenship of Applicant
If applicant’s entity type is a corporation or association, applicant must 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. If applicant’s entity type is a partnership or joint venture, applicant must specify the country under whose laws the partnership or joint venture is organized. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b), 803.04.
/Vivian Micznik First/
Vivian Micznik First
Trademark Attorney, Law Office 114
571-272-9159
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.