UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/077833
MARK: AIRNE
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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: ATLAS COPCO AIRPOWER,; naamloze vennoots 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. 1026237
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 if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and 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 located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION FOR SOFTWARE IN CLASS 009
THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN – SOFTWARE
The applied-for mark is AIRNET for, in part, software in Class 009 . The registered marks is are: (1) AIRNET and design for, in part, several types of softeware, specifically, “base station subsystem software for establishment and supervision of radio communications, measuring communications performance, diagnostic testing, and monitoring and controlling base station and base station controller equipment; operation and maintenance center software for configuration and status monitoring of a network of base station equipment, collection and [status monitoring of a network of base station equipment, collection and] analysis of performance measurement data and control of diagnostic testing of host computer controlled electronic base station equipment for cellular phones and similar communication devices for voice and data communications; and air radio interface software and base transceiver system software for the modulation, demodulation, error correction encoding and decoding, voice and data compression and decompression, receiver equalization, and supervision of radio signals for host computer controlled electronic base station equipment for cellular telephones and similar communication devices for voice and data communications;” (2) AIRNET for “base station controller (BSC) software, base station subsystem (BSS) software and operation and maintenance center (OMC) software for host computer controlled electronic base station equipment for cellular telephones.;” and (3) AIRONET for, in part, “computer software products that provide seamless connection to network management systems; and computer software products that allow mobile users equipped with portable computing platforms to roam between access points without interruption to their activities.”
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
Upon review, the applied-for mark is similar to the registerd marks because they all share the wording AIRNET or the close approximation – AIRONET. The addition of the design in one of the registered marks is not sufficient to remove the likelihood of confusion because the word portions of the mark are virtually identical. The word portions of the marks are nearly identical in appearance, sound and meaning. The addition of the design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). The addition of the letter “O” in AIRONET is insufficient to change the commercial impression, sound, and appearance of the mark to remove the likelihood of confusion with the applied-for mark.
Accordingly, the marks are similar under Section 2(d) for refusal purposes.
Comparison of the Goods/Services
Here, the “software” goods of the applied-for mark are closely related to the software goods in the registered marks because it is sufficiently broad to encompass the more specific goods in the registered marks. 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).
In this case, applicant’s goods and/or services are identified broadly. Therefore, it is presumed that the application encompasses all goods and/or services 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 similarity between the marks as well as the close relationship of the goods, the applied-for mark is refused registration under Section 2(d).
Applicant must respond to the requirement(s) set forth below.
The wording used to describe the goods is indefinite and must be clarified because it lacks the specificity required by the Office. See TMEP §1402.01. The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). Additionally, the identification of goods and/or services 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/or services and incorporate the parenthetical information into the description.
Suggested amendments appear below in bold. Areas in the suggestions that require further detail are in brackets.
Suggested Amendments
Applicant may adopt the following identification of goods, if accurate:
Class 006: Common metals and their alloys including stainless steel; goods of common metal not included in other classes, namely, common metal drawer pulls, figures of common metal, and boxes of common metal; metal pipes; metal tubes; metal joints for pipes; couplings of metal; pipelines, namely, branching tubes of metal for pipelines; metal fittings, namely, metal hose fittings, metal pipe fittings, and ring-shaped fittings of metal; metal valves not being parts of machines; metal screws; metal clips for {indicate use, i.e., metal cable clips, brick siding, etc.}; metal junctions for pipes as parts of machines {moved from Class 007}
Class 007: Machines and machine tools for the cutting and forming of materials; machines and machine tools, namely, {indicate specific machines and machine tools in Class 007, i.e., thread milling cutters, milling cutters, gear cutters, and aerators}; engines, other than for land vehicles; machine coupling and transmission components except for land vehicles; compressors, namely, compressors as parts of machines, motors, and engines and electric compressors; air compressors; piston compressors, namely, gas compressors and electric compressors; generators, namely, gas generators for powering jet engines being a component part of jet engines and electric generators being parts of machines; valves as machine components and valves being engine parts for introducing fuel-air mixtures into combustion chambers of internal combustion engines; regulators being parts of machines; air-intake tubes for after-market installation of automotive engines; taps being parts of machines and engines;
Class 009: Software, namely, computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheets, word processing, etc., and if software is content- or field-specific, the content or field of use}; safety devices namely, safety goggles, flashing safety lights, and safety nets; control systems for compressors and generators, namely, automated process control system, specifically, a micro-processor based hardware and software system used to monitor the statue of generators and compressors; electronic steering systems, namely, computer hardware and software used for automated steering of machinery
Class 017: Non-metallic flexible pipes with or without insulating properties; couplings, not of metal, for pipes; non-metallic flexible tubes, namely, rubber tubes and pipes; clack valves of rubber for use in {indicate particular use of the valves}
See TMEP §1402.01.
Advisory
Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.
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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions: Applicant must specify whether “AIRNET” in the mark has any meaning in a foreign language. See 37 C.F.R. §2.32(a)(9); TMEP §§809, 814. An applicant must submit an English translation of all foreign wording in a mark and a transliteration of all non-Latin characters in a mark. 37 C.F.R. §§2.32(a)(9), (a)(10); TMEP §809. A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-Latin characters.
If this wording has meaning in a foreign language, applicant must submit a statement translating the non-English wording in the mark. 37 C.F.R. §2.32(a)(9); TMEP §809. If some or all of the applied-for mark is in non-Latin characters, then applicant must also provide a statement transliterating the non-Latin characters, with either a translation of the corresponding non-English wording or a statement that the transliterated term has no meaning in a foreign language. 37 C.F.R. §2.32(a)(10); TMEP §809.
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
GENERAL INFORMATION
/Mark Shiner/
Trademark Examining Attorney
Law Office 102
Phone: 571-272-1489
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.