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. 79183049
MARK: F2
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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: FEDERATION INTERNATIONALE DE L'AUTOMOBIL ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1288818
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
Search Results for Classes 35
With respect to Class 35 ONLY, Applicant is advised.
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Trademark Act Section 2(d) – Likelihood of Confusion Refusals
The following refusals are issued with respect to the goods in Class 12.
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 mark in the referenced application. 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.
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.
Applicant seeks registration of F2 for goods and services that include, among other items, vehicles, racing cars, including their components and equipment included in this class, motors and engines for land vehicles, diesel and electric motors for land vehicles; electric and hybrid automobiles and their component parts and their equipment included in this class; electric racing cars; go-karts, electric go-karts; vehicle chassis; transmissions for land vehicles; brakes for vehicles; vehicle seats; safety harnesses for car racing; safety seats for children, for vehicles; safety seats for cars; safety belts for vehicle seats; tires for passenger cars; tires for trucks; tires for buses; tires for racing cars; automobile tires; inner tubes for passenger cars; inner tubes for trucks; inner tubes for buses; inner tubes for racing cars; inner tubes for automobiles; wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for automobiles; and treads for retreading the tires of the aforesaid vehicles. The mark F2 in Registration No. 3,883,365 for goods that include, among other items, spare tire carriers for vehicles has been cited as bars to registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
The Applicant’s mark F2 and the Registrant’s mark F2 are identical in appearance, sound and commercial impression. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
This principle was set forth in Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (C.C.P.A. 1935), wherein the Court of Customs and Patent Appeals applied the following reasoning in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder: “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”
Even lettered marks having only two letters in common, used on identical or closely related goods, have been held likely to cause confusion. See, e.g., Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (finding confusion between FSC and FS); Cluett, Peabody & Co. v. J.H. Bonck Co., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); see also TMEP §1207.01(b)(ii)-(iii).
The second issue for consideration is whether the goods of the parties are related. The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
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).
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 use(s) broad wording to describe the goods and/or services, namely, racing cars, electric and hybrid automobiles and equipment and components for these vehicles. This wording is presumed to encompass all goods and/or services of the type described, including those in Registrant(s)’s more narrow identification. Therefore, the Applicant’s equipment and component for racing cars and electric and hybrid automobiles is presumed to include all types of equipment and component parts for these vehicles, including spare tire carriers for vehicles. Therefore, the goods are considered to be identical.
Where goods are identical, they are presumed to travel through the same channels of trade to the same classes of purchasers. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3rd 1261, 1268 (Fed. Cir. 2002).
The Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, has found that the existence of one item in an identification of goods that is legally identical to the goods in the cited registration is sufficient to support a finding of likelihood of confusion for the entire class of goods. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); See also In re Max Capital Group, Ltd., 93 USPQ2d 1243 (TTAB 2010).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Inasmuch as the marks are identical and the goods are related, a likelihood of confusion exists.
Applicant seeks registration of F2 for goods and services that include, among other items, vehicles, racing cars, including their components and equipment included in this class, motors and engines for land vehicles, diesel and electric motors for land vehicles; electric and hybrid automobiles and their component parts and their equipment included in this class; electric racing cars; go-karts, electric go-karts; vehicle chassis; transmissions for land vehicles; brakes for vehicles; vehicle seats; safety harnesses for car racing; safety seats for children, for vehicles; safety seats for cars; safety belts for vehicle seats; tires for passenger cars; tires for trucks; tires for buses; tires for racing cars; automobile tires; inner tubes for passenger cars; inner tubes for trucks; inner tubes for buses; inner tubes for racing cars; inner tubes for automobiles; wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for automobiles; and treads for retreading the tires of the aforesaid vehicles. The mark F2C in Registration No. 4,376,960 for rearview mirrors has been cited as bars to registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
The Applicant’s mark F2 and the Registrant’s mark F2C create similar commercial impressions because they consist of or contain the term F2. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In addition, it is well-settled that, when comparing marks that consist of a series of two or more letters, confusion may be likely even if the letters are not identical or in the same order. It is more difficult to remember a series of arbitrarily arranged letters than to remember words or figures; that is, confusion is more likely between arbitrarily arranged letters than between other types of marks. See, e.g., Weiss Assoc. v. HRL Assoc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding confusion between TMS and TMM); Dere v. Inst. for Scientific Info., Inc., 420 F.2d 1068, 164 USPQ 347 (C.C.P.A. 1970) (finding confusion between ISI and I.A.I.); cf. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (finding confusion between registrant’s KING FM and KING-TV and applicant’s KYNG).
This principle was set forth in Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (C.C.P.A. 1935), wherein the Court of Customs and Patent Appeals applied the following reasoning in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder: “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”
Even lettered marks having only two letters in common, used on identical or closely related goods, have been held likely to cause confusion. See, e.g., Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (finding confusion between FSC and FS); Cluett, Peabody & Co. v. J.H. Bonck Co., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); see also TMEP §1207.01(b)(ii)-(iii).
The second issue for consideration is whether the goods of the parties are related. The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
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).
Vehicles and their various accessories, parts, and attachments may be closely related goods such that the average person encountering the same or similar marks for such products is likely to be confused as to their source. See, e.g., In re Gen. Motors Corp., 196 USPQ 574, 576 (TTAB 1977). It is well established in the marketplace that manufacturers of vehicles often produce accessories and attachments for such vehicles and market them under the same mark. E.g., In re Gen. Motors Corp., 23 USPQ2d 1465, 1469 (TTAB 1992); In re Sien Equip. Co., 190 USPQ 84, 85 (TTAB 1976).
The Trademark Trial and Appeal Board has previously held that marketing by different parties of different types of automotive parts and accessories under the same or similar marks is likely to cause confusion. See, e.g., In re Delbar Prods., Inc., 217 USPQ 859, 861 (TTAB 1981) (holding ULTRA for outside mounted vehicle mirrors likely to be confused with ULTRA and design for automobile parts, namely pistons and pins, valves, water pumps, oil pumps, universal joints, gears, axle shafts, hydraulic brake parts, automatic transmission repair kits and parts, engine bearings and jacks); In re Red Diamond Battery Co., 203 USPQ 472, 472-73 (TTAB 1979) (holding RED DIAMOND for storage batteries likely to be confused with DIAMOND for pneumatic rubber automobile and vehicle tires); In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106, 107-08 (TTAB 1975) (holding T and design for, inter alia, hoses, namely rubber hoses and inner tubes for tires and pneumatic, semisolid and solid tires likely to be confused with T and design for, inter alia, motor oil, oil additives and fuel additives); In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974) (holding MAGIC for vehicle parts, namely mufflers, likely to be confused with MAGIC for motors for motor vehicles).
With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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 use(s) broad wording to describe the goods and/or services, namely, racing cars, electric and hybrid automobiles and equipment and components for these vehicles. This wording is presumed to encompass all goods and/or services of the type described, including those in Registrant(s)’s more narrow identification. Therefore, the Applicant’s equipment and component for racing cars and electric and hybrid automobiles is presumed to include all types of equipment and component parts for these vehicles, including rearview mirrors. Therefore, the goods are considered to be identical.
Where goods are identical, they are presumed to travel through the same channels of trade to the same classes of purchasers. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3rd 1261, 1268 (Fed. Cir. 2002).
The Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, has found that the existence of one item in an identification of goods that is legally identical to the goods in the cited registration is sufficient to support a finding of likelihood of confusion for the entire class of goods. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); See also In re Max Capital Group, Ltd., 93 USPQ2d 1243 (TTAB 2010).
In addition, the attached print outs from JC Whitney, available at JCWHITNEY.COM, Summit Racing Equipment, available at SUMMITRACING.COM, and 4 Wheel Parts, available at 4WHEELPARTS.COM, show rear view mirrors, tires and wheels are available through the same channels of trade. This attached Internet evidence establishes that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
In addition, the attached evidence from the USPTO’s X-Search database, which consists of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely rear view mirrors, tires and wheels, are of a kind that may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).
Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.
Applicant seeks registration of F2 for goods and services that include, among other items, vehicles, racing cars, including their components and equipment included in this class, motors and engines for land vehicles, diesel and electric motors for land vehicles; electric and hybrid automobiles and their component parts and their equipment included in this class; electric racing cars; go-karts, electric go-karts; vehicle chassis; transmissions for land vehicles; brakes for vehicles; vehicle seats; safety harnesses for car racing; safety seats for children, for vehicles; safety seats for cars; safety belts for vehicle seats; tires for passenger cars; tires for trucks; tires for buses; tires for racing cars; automobile tires; inner tubes for passenger cars; inner tubes for trucks; inner tubes for buses; inner tubes for racing cars; inner tubes for automobiles; wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for automobiles; and treads for retreading the tires of the aforesaid vehicles. The mark F2X in Registration No. 4,218,872 for goods identified as bicycles and bicycle structural parts has been cited as bars to registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
The Applicant’s mark F2 and the Registrant’s mark F2X create similar commercial impressions because they consist of or contain the term F2. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In addition, it is well-settled that, when comparing marks that consist of a series of two or more letters, confusion may be likely even if the letters are not identical or in the same order. It is more difficult to remember a series of arbitrarily arranged letters than to remember words or figures; that is, confusion is more likely between arbitrarily arranged letters than between other types of marks. See, e.g., Weiss Assoc. v. HRL Assoc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding confusion between TMS and TMM); Dere v. Inst. for Scientific Info., Inc., 420 F.2d 1068, 164 USPQ 347 (C.C.P.A. 1970) (finding confusion between ISI and I.A.I.); cf. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (finding confusion between registrant’s KING FM and KING-TV and applicant’s KYNG).
This principle was set forth in Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (C.C.P.A. 1935), wherein the Court of Customs and Patent Appeals applied the following reasoning in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder: “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”
Even lettered marks having only two letters in common, used on identical or closely related goods, have been held likely to cause confusion. See, e.g., Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (finding confusion between FSC and FS); Cluett, Peabody & Co. v. J.H. Bonck Co., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); see also TMEP §1207.01(b)(ii)-(iii).
The second issue for consideration is whether the goods of the parties are related. The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
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).
Vehicles and their various accessories, parts, and attachments may be closely related goods such that the average person encountering the same or similar marks for such products is likely to be confused as to their source. See, e.g., In re Gen. Motors Corp., 196 USPQ 574, 576 (TTAB 1977). It is well established in the marketplace that manufacturers of vehicles often produce accessories and attachments for such vehicles and market them under the same mark. E.g., In re Gen. Motors Corp., 23 USPQ2d 1465, 1469 (TTAB 1992); In re Sien Equip. Co., 190 USPQ 84, 85 (TTAB 1976).
The Trademark Trial and Appeal Board has previously held that marketing by different parties of different types of automotive parts and accessories under the same or similar marks is likely to cause confusion. See, e.g., In re Delbar Prods., Inc., 217 USPQ 859, 861 (TTAB 1981) (holding ULTRA for outside mounted vehicle mirrors likely to be confused with ULTRA and design for automobile parts, namely pistons and pins, valves, water pumps, oil pumps, universal joints, gears, axle shafts, hydraulic brake parts, automatic transmission repair kits and parts, engine bearings and jacks); In re Red Diamond Battery Co., 203 USPQ 472, 472-73 (TTAB 1979) (holding RED DIAMOND for storage batteries likely to be confused with DIAMOND for pneumatic rubber automobile and vehicle tires); In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106, 107-08 (TTAB 1975) (holding T and design for, inter alia, hoses, namely rubber hoses and inner tubes for tires and pneumatic, semisolid and solid tires likely to be confused with T and design for, inter alia, motor oil, oil additives and fuel additives); In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974) (holding MAGIC for vehicle parts, namely mufflers, likely to be confused with MAGIC for motors for motor vehicles).
With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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 use(s) broad wording to describe the goods and/or services, namely, vehicles. This wording is presumed to encompass all goods and/or services of the type described, including those in Registrant(s)’s more narrow identification. Therefore, the Applicant’s vehicles are presumed to include all types of vehicles, including bicycles. Therefore, the goods are considered to be identical.
Where goods are identical, they are presumed to travel through the same channels of trade to the same classes of purchasers. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3rd 1261, 1268 (Fed. Cir. 2002).
The Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, has found that the existence of one item in an identification of goods that is legally identical to the goods in the cited registration is sufficient to support a finding of likelihood of confusion for the entire class of goods. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); See also In re Max Capital Group, Ltd., 93 USPQ2d 1243 (TTAB 2010).
Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.
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.
Applicant seeks registration of F2 for services in Class 41 that include, among other services, entertainment, sporting and cultural activities, televised sporting and cultural entertainment, organization of sporting and cultural events and activities, entertainment services provided during sports events or concerning sports events, organization of real or virtual sports competitions, information concerning entertainment provided on line from a data bank of the Internet, and information services concerning sports and sporting events. The mark FORMULA TWO in Reg. No. 2,452,264 for organizing and promoting power boat races has been cited as a bar to registration under Trademark Act Section 2(d).
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
As demonstrated by the attached print outs from ALLABBREVIATIONS.COM, “F” is an abbreviation for the word “formula.” As a result, the Applicant’s mark and the Registrant’s mark create similar commercial impressions because they have the same meaning. The differences in the presentations of the numeral “2” in the number form and as a word is insufficient to distinguish the marks and avoid a likelihood of confusion. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
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).
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 Applicant’s use(s) broad wording to describe the goods and/or services, namely, entertainment, sporting and cultural activities, and organization of sporting and cultural events and activities, among other services. This his wording is presumed to encompass all goods and/or services of the type described, including those in registrant(s)’s more narrow identification, namely, organizing and promoting power boat races. Therefore, the services are considered to be identical.
Where goods or services are identical, they are presumed to travel through the same channels of trade to the same classes of purchasers. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3rd 1261, 1268 (Fed. Cir. 2002).
The Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, has found that the existence of one item in an identification of goods or services that is legally identical to the goods or services in the cited registration is sufficient to support a finding of likelihood of confusion for the entire class of goods or services. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); See also In re Max Capital Group, Ltd., 93 USPQ2d 1243 (TTAB 2010).
Inasmuch as the marks are similar and create the same commercial impression and the services are related, a likelihood of confusion exists.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Identification of Goods for Class 12 – Indefinite for purposes of registration
An application must specify, in an explicit manner, “the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.” TMEP §1402.01; see 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6). Therefore, proper punctuation in identifications of goods and/or services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id. However, colons and periods should not be used in an identification of goods and/or services. Id.
For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class. See id. However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” See id.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
Identification of Services for Class 35
Generally, parentheses and brackets should not be used in identifications. TMEP §1402.12. The USPTO generally uses brackets to indicate goods and/or services that have been deleted from registrations. See id. 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).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
For example, “modems and/or monitors” could be read to mean “modems or monitors” and thus it is unclear which goods applicant intends to identify. Applicant could amend the identification to “modems” alone, or “monitors” alone, or “modems and monitors” if applicable. Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
Generally, parentheses and brackets should not be used in identifications. TMEP §1402.12. The USPTO generally uses brackets to indicate goods and/or services that have been deleted from registrations. See id. 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).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
An application must specify, in an explicit manner, “the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.” TMEP §1402.01; see 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6). Therefore, proper punctuation in identifications of goods and/or services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id. However, colons and periods should not be used in an identification of goods and/or services. Id.
For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class. See id. However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” See id.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
Identification of Services for Class 41
The identification of services for Class 41 must be clarified because it is indefinite for purposes of registration. See TMEP §1402.01. Applicant may adopt the following format in amending the identification, if accurate:
1. “Education; training; entertainment;” must each be amended to identify the particular services by their common commercial names, as follows, “Educational services, namely, _________________ [describe the particular educational services by their common commercial names – such as providing __________ [indicate whether workshops, classes, seminars, etc.] in the field of __________[describe subject matter];”];” in Cass 41; “Providing training in the field of __________[describe subject matter of content];” in Class 41; and “entertainment services, namely, __________ [describe the particular entertainment services by their common commercial names];” in Class 41
2. “Sporting and cultural activities,” should be amended to “Organizing community sporting and cultural events;” in Class 41
3. “Televised sporting and cultural entertainment;” should be amended to “Entertainment services, namely, televises appearances by _______ [indicate the types of individuals – such as sports celebrity, race car driver, etc. – whatever is accurate and compete] for sporting and cultural entertainment purposes;” in Class 41
4. “Organization of motor vehicle races;” should be amended to “Organizing and conducting motor vehicle races;” in Class 41
5. “Organization of sporting and cultural events and activities;” should be amended to “organizing community sporting and cultural events;” in Class 41
6. “Organization of exhibitions for cultural and educational purposes;” is acceptable in Class 41
7. “Organization of lotteries and competitions;” should be amended to “organization of lotteries and __________ [describe the types of competitions – such as sports, fly fishing, car racing, etc.] competitions;” in class 41
8. “Betting and gambling services in connection with or relating to sports;” should be amended to “Betting and gambling services for sports events;” in Class 41
9. “Entertainment services provided during sporting events or concerning sporting events;” should be amended to “Entertainment services, namely, providing ___________ [describe the particular types of entertainment services by their common commercial names] in connection with sports events, namely, __________[describe the particular sports events by their common commercial names];” in Class 41.
10. “Organization of real or virtual sports competitions, particularly mechanical sports competitions;” should be amended to “organization of sports competitions; entertainment services, namely, providing an on-line , non-downloadable virtual sports competitions featuring __________ [describe the goods used in connection with the sports competition - such as racing cars] for use in in virtual environments featuring __________ [describe the types of competitions – such as motor vehicle races] created for entertainment purposes;” in Class 41
11. “Provision of sports infrastructures;” should be amended to “Providing sports facilities;” in Class 41
12. “Provision of motor racing circuits;” should be amended to “Entertainment services provided in connection with a motor racing circuit, namely, organization of motor vehicle races and motor vehicle race sporting and cultural events;” in Class 41
13. “Rental of audio and video equipment, production of films, other than advertising films;” should be amended to replace the comma after the word “equipment” with a semi colon, “rental of audio and video equipment; production of films, other than advertising films;” in Class 41
14. “Production of sound and video recordings;” should be amended to “production of sound recordings and video recordings;” in Class 41
15. “Presentation and distribution of films and of sound and video recordings;” should be amended to “Distribution of motion picture films, sound recordings, and video recordings;” in Class 41
16. “Rental of sound and video recordings;” should be amended to “rental of sound recordings and video recordings;” in Class 41
17. “Rental and/or provision via a computer network of interactive education and entertainment products, namely, interactive compact discs, CD-ROMs, computer games;” should be amended to “Rental of computer game software recorded on interactive compact discs and CD-Roms; rental of computer game programs and software and providing on-line interactive computer games via a computer network;” in Class 41
18. “Entertainment, namely, presentation of interactive education and entertainment products, namely, interactive compact discs, CD-ROMs, computer games;” should be amended to “Entertainment services in the nature of the presentation of interactive educational and entertainment and educational products, namely, providing on-line, non-downloadable software recorded on compact discs and CD-Roms, namely, providing on-line interactive computer games;” in Class 41
19. “Coverage of radio broadcast and televised sports events;” should be amended to “Coverage of radio broadcast and televised sports events, namely, news reporting services in the field of sports featuring radio broadcast and televised sports events;” in Class 41
20. “Production of television and radio programs and of videotapes;” should be amended to “production of television and radio programs and of videotapes featuring ____________[describe content or subject matter];” in Class 41
21. “Reservation of tickets for sporting events and shows;” should be amended to “arranging ticked reservations for sporting events and entertainment shows;” in Class 41
22. “Timing of sports events;” is acceptable in Class 41
23. “Interactive entertainment;” should be amended to “Entertainment services, namely, providing temporary use on non-downloadable interactive games;” in Class 41, “children’s entertainment and amusement centers, namely, interactive play areas;” in Class 41 or “Entertainment services, namely, providing on-line interactive children’s stories;” in Class 41
24. “On-line betting services;” should be amended to “Entertainment services, namely, providing a website for on-line betting;” in Class 41
25. “Provision of games on the Internet;” should be amended to “Electronic games services provided by means of the Internet;” in Class 41. Applicant’s attention is invited to Paragraph 27 regarding duplicate listings of goods and services.
26. “Information concerning entertainment or education, provided on line from a data bank or the Internet;” should be amended to “Information on entertainment and education, provided on-line or from a data bank;” in Class 41
27. “Electronic game services provided by means of the Internet;” is duplicative of Paragraph 25. Applicant may either (1) modify one of these two identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete one entry. See TMEP §707.02. However, if applicant modifies the goods and/or services, applicant may do so only to clarify or limit them; 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.
28. “Provision of electronic publications on line;” should be amended to “Non-downloadable on-line electronic publications in the nature of ______ [specify the types of publications – such as books, magazines, newsletters, etc.] in the field of ___________ [describe subject matter];” in Class 41
29. “Publication of books, magazines, texts (other than advertising texts) and periodicals;” should be amended to “publication of books, magazines, texts other than advertising texts and periodicals;” in Class 41
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
30. “Publication of texts (other than advertising texts), including regulations, norms and standards relating to automotive transport and mechanical sports;” should be amended to “publication of texts other than advertising texts featuring regulations, ___________ [replace “norms” with the common commercial names of these items], and standards relation to automobile transportation and ________ [describe what is meant by “mechanical sports];” in Class 41
31. “Provision of sporting results;” should be amended to “providing information in the field of sports, namely, results of ___________ [describe the particular sports events – such as “car races,” etc. – whatever is accurate and complete];” in Class 41
32. “Information services concerning sports and sporting events;” should be amended to “providing information in the field of sports and sporting events;” in Class 41
33. “Rental of recorded sounds and images;” should be amended to “rental of sound recordings and image-recorded magnetic tapes;” in class 41
34. “Audio production services;” should be amended to “production of audio recording;” in Class 41
35. “Information services concerning sporting events provided on line from a computer database or the Internet;” should be amended to “Providing on-line information in the field of sporting events by means of a computer database or the Internet;” in Class 41
36. “Editing and publishing services;” must be amended to describe the types of editing and publishing services, “editing and publishing services, namely, __________ [describe type - such a copy, film, photo, video, written text, etc.] editing and publishing of __________ [describe the types of publications – such as books, magazines, electronic publications, reviews, web magazines, etc.];” in class 41
37. “Publication of statistics regarding sporting results and audience ratings for sporting competitions;” should be amended to “publication of ___________ [describe the types of publications – such as magazines, newspapers, etc.- whatever is accurate and complete] featuring statistics regarding sporting results and audience ratings for sporting competitions;” in Class 41
38. “Driving courses;” should be amended to “Vehicle driving instruction, namely, providing courses in the field of vehicle driving;” in Class 41
39. “Design, conducting and hosting of courses, seminars and all training activities in the field of vehicle driving;” should be amended to “Designing, conducting and hosting of educational courses, seminars and training programs in the field of vehicle driving;” in Class 41
40. “Education and training services, namely, training program design, training and proficiency examination relating to driving of motor vehicles with a view to providing certification of aptitude or an internationally recognized driving license;” should be amended to “Educational services, namely, providing training programs, designing educational proficiency examinations, and educational examination services in the field of motor vehicle driving proficiency and providing certifications of aptitude and international driving licenses in connection therewith;” in Class 41
41. “Entertainment information;” should be amended to “providing information about entertainment;” in Class 41
42. “Organization and conducting of award ceremonies and gala ceremonies for entertainment purposes” should be amended to “Providing recognition and incentives by the way of awards ceremonies and gala ceremonies to demonstrate excellence in the field of ___________ [describe field] for entertainment purposes;” in Class 41
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id. However, colons and periods should not be used in an identification of goods and/or services. Id.
For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class. See id. However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable: “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.” See id.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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.
Clarification regarding Legal Entity of Applicant
The application identifies applicant as an association of Switzerland. Clarification is required. See TMEP §803.03.
Applicant must indicate whether, under the laws of Switzerland, an association is required to specify whether it is incorporated or unincorporated. TMEP §803.03(c).
Mark Description
Therefore, applicant must provide a description of the applied-for mark. The following format should be used:
The mark consists of a stylized letter “F” and the numeral “2.”
Assistance
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 U.S. commonwealths or U.S. territories. 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
/Susan A. Richards/
Susan A. Richards
Law Office 103
Telephone (571) 272-8266
E-mail Address susan.richards@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.