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. 79169482
MARK: DECATHLON
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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: Geraer Batterie Dienst GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1257568
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) LIKELIHOOD OF CONFUSION REFUSAL
Applicant has applied to register the mark DECATHLON for use in connection with the following goods and services: “Batteries; accumulators; battery chargers; safety switchgear devices for power network outages; installations for power supply, in particular central battery installations, group supply systems, installations for uninterruptible power supplies” in International Class 009; and “.
Registrant owns the following registrations:
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, 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 at 1355, 98 USPQ2d at 1260; 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 services, and similarity of the trade channels of the goods and 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
In the present case, applicant’s mark is DECATHLON, and registrant’s marks are DECATHLON. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and services.
Therefore, the marks are confusingly similar.
Comparison of the Services
The respective goods and 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 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).
In this case, applicant provides batteries, accumulators, and switchgear devices for power network outages. Applicant also provides maintenance and repair of these goods. Similarly, registrant provides software and devices to monitor equipment and systems for data centers. The goods and services of the respective parties are related for likelihood of confusion purposes, because they are the type of goods and services that often emanate from the same source. For example, the attached evidence from Schneider Electric indicates that it provides switchgears, battery systems, and solutions for data center management. See http://www.schneider-electric.com/en/product-category/3500-mv-switchgear; http://www.schneider-electric.com/en/product-subcategory/80023-central-battery-system/?parent-category-id=8100; http://www.schneider-electric.us/en/solutions/for-business/data-centers-and-networks/explore-our-offer/?journey=true; . In addition, Schneider Electric also provides maintenance and repair of batteries and other system components, including accumulators. See http://www.schneider-electric.com/en/product-range/61835-battery-replacement-services?xtmc=batteries&xtcr=1; http://www.schneider-electric.com/en/product-range/61839-preventive-maintenance/?parent-category-id=7700&parent-subcategory-id=7720. Likewise, Emerson Network Power also provides batteries, switchgears, and monitoring products, including software, for data center infrastructure and support. See http://www.emersonnetworkpower.com/en-US/Products/DCPower/ensys_BatteriesAndAccessories/Batteries/Pages/Default.aspx; http://www.emersonnetworkpower.com/en-US/Products/PowerSwitchingandControls/PowerControlSystems/MedVoltageParalleling/Pages/Default.aspx; http://www.emersonnetworkpower.com/en-US/Products/InfrastructureManagement/DataCenterMonitoringandAccess/Pages/default.aspx. In addition, Emerson also provides maintenance of switchgears and batteries. See http://www.emersonnetworkpower.com/en-US/Services/Market/Industrial/Equipment-Based-Services/Preventive-Maintenance/Pages/Switchgear.aspx; http://www.emersonnetworkpower.com/en-US/Services/Market/Industrial/Equipment-Based-Services/Preventive-Maintenance/Pages/Batteries.aspx. Thus, based on this evidence, it is clear that consumers are accustomed to encountering applicant’s type of products and services emanating from the same source as registrant’s type of products.
Ultimately, the goods and services in this case are highly related, because the evidence of record demonstrates that the goods and services of the respective parties are normally provided by the same companies under the same mark. Therefore, the goods and services of the respective parties are related for likelihood of confusion purposes.
In sum, given the fact that applicant’s mark is identical to registrant’s marks, and the goods and services of the applicant and registrant are highly related, there is a likelihood of confusion in the marketplace. Therefore, applicant’s mark is refused registration pursuant to Section 2(d) of the Trademark Act.
IDENTIFICATION REQUIREMENT
For the reasons set forth below, the identification of goods and services needs clarification because it is, in part, indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01. The portion of the identification that is unacceptable is underlined below. If not underlined, then that portion of the identification is acceptable.
Applicant identified the following goods and services:
“Batteries; accumulators; battery chargers; safety switchgear devices for power network outages; installations for power supply, in particular central battery installations, group supply systems, installations for uninterruptible power supplies” in International Class 009.
“Maintenance and repair of accumulators, safety switching apparatus for power network failures, installations for power supply, in particular central battery installations, group supply systems, installations for uninterruptible power supply” in International Class 037.
The wording “installations for power supply, in particular central battery installations, group supply systems, installations for uninterruptible power supplies” is indefinite in both Class 009 and Class 037, because it is unclear what applicant means by “group supply systems” and “installations for uninterruptible power supplies.” Generally, if applicant uses indefinite words such as “installations,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1401.05(d), 1402.03(a). Therefore, applicant must amend to identify the goods by the common commercial name. The following amendment is suggested {please note that suggestions for amended wording appear in bold. In addition, the language in italics is for informational purposes only and must not appear in the final identification.}:
“Batteries; accumulators; battery chargers; safety switchgear devices for power network outages; installations for power supply, in particular, central battery installations, group supply systems comprising ___________ {applicant to insert the common commercial name, e.g., inverters for power supply, high-frequency switching power supplies, etc.}, and installations for uninterruptible power supplies in the nature of uninterruptible electrical power supplies” in International Class 009.
“Maintenance and repair of accumulators, safety switching apparatus for power network failures, installations for power supply, in particular central battery installations, group supply systems comprising ___________ {applicant to insert the common commercial name, e.g., inverters for power supply, high-frequency switching power supplies, etc.}, and installations for uninterruptible power supplies in the nature of uninterruptible electrical power supplies” in International Class 037.
Applicant should note that in a Section 66(a) application, an applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
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.
RESPONSE GUIDELINES
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.
/Brin Anderson Desai/
Brin Anderson Desai
Trademark Examining Attorney
Law Office 113
571-272-6399
Brin.Desai@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.