UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79160236
MARK: TK
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Thomas Kurze GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FIRST 180OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1235352
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register the mark TK (stylized) for “Machines and machine tools, namely, antifriction bearings for machines, driving motors, except for land vehicles; drill chucks (machine parts), drilling heads (machine parts), drilling bits (machine parts), drilling machines, grinding machines, brushes (machine parts), compressed air machines, pressure reducers (machine parts), pressure regulators (machine parts), pressure valves (machine parts), electromechanical machines for the chemical industry, expansion tanks (parts of machines), filter (machine parts or engine parts), milling machines, bellows machines, grating machines for vegetables, hand drills (electric), blades (machine parts), pistons (machine parts or engine parts), compressors (machines), food processors (electric), bearings (machine parts), bearing brackets for machines, machines for the chemical industry, machines for metal processing, machines for the production of pasta, engine shafts, knives (machine parts), mixing machines, blenders (machines), connecting rods for machines and engines, pumps (machines parts or engine parts), pumps (machines), regulators (machine parts), agitators, saw blades (machine parts), suction machines for industrial purposes, peeling machines, valves (machine parts), grindstones wheels (machine parts), grease rings (machine parts), lubricators (machine parts), welding machines (electric), flywheels for machines, sieves (machines or machine parts), jaw chucks (machine parts), control devices for machines or engines, stuffing boxes (machine parts), transmissions for machines, vacuum pumps (machines), carburetters, heat ex changers (machine parts), laundry washing machines, water-heaters (machine parts), shaft couplings (machines), tools (machine parts), milling machines for commercial purposes, cylinders for machines, engines (except for engines for land transportation vehicles); engines parts (all type); clutches and devices for the power transmission (except for land vehicles);” “Vehicles; apparatus for locomotion by land, air or sea; engines for land vehicles;” and “Retail and wholesale services regarding vehicles, motor vehicle spare parts and/or accessories, machines and/or machine parts, particularly filters, ball bearings, seals, valves, spare parts for the plant construction, pumps, compressors, drying units, cooling units, electric motors, generators, loading facilities, steam traps, fixing materials, lubricants, oils, tools, electrical appliances, home appliances, kitchen utensils, cookware, dishes, cutlery, cooking utensils, diagram plotters, measuring instruments, especially instruments for discharge measurement, pressure measurement, level measurement and thermometry.”
The mark in U.S. Registration No. 1582250 is TK (stylized) for “mixers; inline mills; wet-type mills for emulsifying, homogenizing, dispersing, dissolving, reaction acceleration, grinding or size-reducing; agitators; and fine pulverizers, all for industrial use.”
The mark in U.S. Registration No. 2912694 is DT SWISS TK and design for “Motorized and non-motorized bicycles, namely bicycles and parts thereof as well as motorcycles and parts thereof, in particular hubs, suspension systems, suspension forks, spokes, spoke nipples; rims, cranks, tires, handle bars, stems; mudguards, mudguard fastening rods; luggage carriers; bicycle parts, in particular expanders, stands.”
The mark in U.S. Registration No. 4046791 is TK-4 (standard characters) for “armored vehicles.”
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, 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). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court 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 the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
The applicant’s mark is highly similar to each of the marks in the cited U.S. Registrations. All of the marks contain the term TK. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
Comparison of the Goods and/or Services
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The applicant’s goods include a wide variety of machines and machine parts, vehicles and retail store services featuring a wide variety of goods.
U.S. Registration No. 1582250
The goods in U.S. Registration No. 1582250 are “mixers; inline mills; wet-type mills for emulsifying, homogenizing, dispersing, dissolving, reaction acceleration, grinding or size-reducing; agitators; and fine pulverizers, all for industrial use.”
The identification indicates that the applicant is providing various machines including mixing machines, blenders and milling machines.
Both applicant and registrant are providing mixers and milling machines. The goods would be found in the same channels of trade and would be encountered by the same consumers. Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
U.S. Registration No. 2912694 and 4046791
The goods in U.S. Registration No. 2912694 are “Motorized and non-motorized bicycles, namely bicycles and parts thereof as well as motorcycles and parts thereof, in particular hubs, suspension systems, suspension forks, spokes, spoke nipples; rims, cranks, tires, handle bars, stems; mudguards, mudguard fastening rods; luggage carriers; bicycle parts, in particular expanders, stands.”
The goods in U.S. Registration No. 4046791 are “armored vehicles.”
The applicant’s identification indicates that the applicant is providing vehicles and apparatus for locomotion by land air or sea. Additionally, the applicant’s retail store services feature vehicles and vehicle parts.
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrants more narrow identifications. Specifically, the applicant’s vehicles and apparatus for locomotion by land could include armored vehicles, and motorized or non-motorized bicycles.
For the foregoing reasons consumers and potential consumers would be likely to believe that applicant’s goods and/or services emanate from the same source as those provided by the registrant. Accordingly, registration is refused under Section 2(d) of the Act.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Prior Filed 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.
Action on this application will be suspended pending the dispositions of Application Serial No. 86152005 and 86241093, upon receipt of applicant’s response resolving the refusal(s) to register based on a likelihood of confusion and resolving the following requirements. The applicant must respond to the refusal to register based on likelihood of confusion discussed previously herein and the requirements discussed subsequently herein within 6 months of the date of this Office Action to avoid ABANDONMENT.
Additional Requirements
Identification of Goods and Services
The identification of goods and services is indefinite and must be clarified. For example, the applicant must clearly indicate the nature of the vehicles and apparatus for locomotion in International Class 12. Further the identification in International Class 7 contains parentheses. Generally, parentheses and brackets should not be used in identifications because the USPTO generally uses these punctuation marks to indicate goods and/or services that have been deleted from registrations. See TMEP §1402.12. Parenthetical or bracketed 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).” Id.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate any parenthetical or bracketed information into the description. The applicant must amend the wording to clearly and concisely indicate the goods and services being offered. See TMEP §1402.01. The applicant may adopt the following identification, if accurate:
Machines and machine tools, namely, antifriction bearings for machines, driving motors, except for land vehicles; drill chucks for power drills, drilling heads in the nature of drill bits, drilling bits, drilling machines, grinding machines, brushes being parts of machines, compressed air machines, pressure reducers as parts of machines, pressure regulators being parts of machines, pressure valves as parts of machines, electromechanical machines for the chemical industry in the nature of marking and mixing machines, expansion tanks being parts of machines, filters namely oil and fuel filters and air filters for mechanical purposes, milling machines, bellows being machines, grating machines for vegetables, electric hand-held drills, machine parts, namely blades, pistons as parts of internal combustion engines, electric and gas compressors, electric food processors, bearings as parts of machines, bearing brackets for machines, separating and blending machines for the chemical industry, metal forming and sawing machines, machines for the production of pasta, shaft couplings as parts of machines, knives (machine parts), mixing machines, electric food blenders, connecting rods for machines and engines, pumps ______ namely (applicant must indicate the specific goods, i.e. electric pumps, circulating pumps, hydraulic pumps and aquarium pumps, pumps for machines, regulators being parts of machines, agitators for chemical processing and circulating liquid media, saw blades for power saws, air suction machines for industrial purposes, food peeling machines, valves being parts of machines, grindstones wheels being parts of machines, grease piston rings, lubricating pumps being machine parts, electric welding machines, flywheels for machines, sieves sold as parts of machines, jaw chucks for power drills, hydraulic controls for machines or engines, stuffing boxes namely _______ (applicant must indicate the specific goods) as parts of machines, transmissions for machines except for land vehicles, vacuum pumps, carburetors, heat exchangers being parts of machines, laundry washing machines, biodiesel-generation machines, namely heaters, shaft couplings as parts of machines, machine tools for the cutting and forming metal and plastics, milling machines for commercial purposes, cylinders as parts of machines, engines except for engines for land transportation vehicles; engines parts namely _________ (applicant must indicate the specific goods, i.e. engine seals, distributor caps, pistons and oil coolers); clutches and apparatus for power transmission other than for land vehicles in International Class 7.
Vehicles namely automobiles, cars and vehicles for the physically handicapped and those of reduced mobility; apparatus for locomotion by land, air or sea namely bicycles, automobiles and trucks; engines for land vehicles in International Class 12.
Retail and wholesale services featuring vehicles, motor vehicle spare parts and vehicle accessories, machines and machine parts, particularly filters, ball bearings, seals, valves, spare parts for plant construction, pumps, compressors, drying units, cooling units, electric motors, generators, loading pallets and slings, steam traps, adhesive materials, lubricants, oils, tools, electrical appliances, home appliances, kitchen utensils, cookware, dishes, cutlery, cooking utensils, diagram plotters, measuring instruments, especially instruments for discharge measurement, pressure measurement, level measurement and thermometry in International Class 35.
Additions Not Permitted
Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
Id Manual Online
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Description of the Mark
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the letters TK in stylized font.
Response
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
Ellen J.G. Perkins
Examining Attorney
U.S. Patent & Trademark Office
Law Office 110
571 272-9372
Ellen.Perkins@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.