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. 79201248
MARK: CIRCUIT
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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: Focusrite Audio Engineering Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1330272
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:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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
Applicant has applied for the mark CIRCUIT (standard character).
The mark in U.S. Registration No. 4969468 is CIRCUIT (standard character).
The mark in U.S. Registration No. 5085255 is ICIRCUIT (standard character).
U.S. Registration No. 4969468
In the present case, applicant’s mark is CIRCUIT (standard character) and registrant’s mark is CIRCUIT (standard character). These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. In re i.am.symbolic, llc, 116 USPQ2d at 1411.
U.S. Registration No. 5085255
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).
The marks CIRCUIT and ICIRCUIT are highly similar in appearance, sound and meaning with the term “CIRCUIT” promising the primary meaning of the mark. The registrant’s “I” prefix is commonly used to mean “Internet” in relation to electronic goods. The descriptive nature and the overall similarities in the marks outweigh the minor variation.
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS
The applicant’s goods are as follows:
Apparatus, instruments and software for capturing, creating, processing, recording, transmission, reproduction or amplification of sound and/or images; audio electrical and electronic apparatus and instruments; software; recorded software; software applications for mobile devices; sound-recording consoles and software; equalizers; sound processing equipment, namely, equalizers; sound processing equipment, namely, two channel equalizers; parametric, semi-parametric, graphic, peak, and program equalizers; musical instrument digital interface controllers, converters and software; downloadable music files; downloadable mobile phone ringtones; digital music downloadable from a computer database or the internet; music-composition software; computers, laptops, tablet computers, smart phones and telecommunications devices; docking stations for computers, laptops, tablet computers, smart phones and telecommunications devices; docking stations for computers, laptops, tablet computers, smart phones and telecommunications devices for recording, transferring and transmitting video and sound; microphones; amplifiers; microphone pre-amplifiers; stereo pre-amplifiers; outboard audio processing equipment; audio over IP network equipment; computer network interface devices for transmitting and recording audio; audio interfaces to record music and audio to a computer; data processing apparatus; recorded computer programmes; magnetic data media; optical data media; tape recorders; sound recording carriers; record players; video recorders; portable media player; cameras for photography; acoustic conduits; cabinets for loudspeakers; diaphragms for acoustics; audio and video receivers; acoustic couplers; acoustic pickups; time delay reverberators; computer peripheral devices; interfaces for computers; data processing equipment, namely, couplers; downloadable electronic publications; speakers; loudspeakers; horns for loudspeakers; headphones; network communication devices; interfaces for computers; electronic terminals for generating lottery tickets; money counting and sorting machines; mechanisms for coin-operated apparatus; counters; stamping mail (apparatus to check); dictating machines; hemline markers; voting machines; electronic tags for goods; photographic, electrostatic and thermic photocopiers; weighing machines; measures; luminous or mechanical signals; radios; televisions; surveying apparatus and instruments; optical apparatus and instruments; materials for electricity mains, namely, wires and cables; electronic connections, namely, plugs, sockets and other contacts; remote control apparatus; integrated circuits; semi-conductors; optical fibres, namely, light conducting filaments; video and television screens; electric installations for the remote control of industrial operations; rods, namely, lightning conductors; electrolysers; fire extinguishing apparatus; radiological apparatus for industrial purposes; protection devices for personal use against accidents; alarms; eyeglasses; batteries; electric and electronic batteries; exposed x-ray films; electrically heated clothes; portable remote control car arresters in the nature of electronic locks; egg-candlers; dog whistles; decorative magnets; electrified fences; electric cables and wires; chargers for batteries; sound recording control boards; sound processing devices; speech and voice synthesisers; MIDI controllers other than musical instruments; containers and bags adapted for use with all of the aforesaid goods; parts, fittings and accessories for all the aforesaid goods; none of the aforesaid being software for medical purposes; in International Class 9
Musical instruments; electronic musical keyboards and keyboards for musical instruments; music stands; musical instrument cases; musical boxes; music synthesizers; electronic background music machines; musical instruments controlled by computer; electronically operated computer controlled musical instruments; parts, fittings and accessories for all the aforesaid goods; in International Class 15
The goods in U.S. Registration No. 4969468 are, in most relevant part, “Wearable electronic fitness devices comprised primarily of software applications and display screens that enable users to enter, access, track, monitor and share diet, nutrition, fitness and wellness information, tasks and goals, but excluding gaming apparatus; wearable electronic fitness devices comprised primarily of software applications and display screens that enable users to plan fitness activities and set individual fitness goals, receive feedback and motivation tones or messages with regard to reaching those goals, and that enable users to share information about their goals and progress with other individuals, but excluding gaming apparatus; and wearable electronic fitness devices comprised primarily of software applications and display screens that enable users to monitor, track and compile personal information regarding exercise, athletic activities, heart rate, steps taken, distance traveled, rest, food and drink intake, calories burned, weight, body fat and body mass index, but excluding gaming apparatus” in Class 9.
The goods in U.S. Registration No. 5085255 are “Circuit boards for computers; computer chip circuits; computer circuits for cars; battery chargers; cell phone battery chargers; solar-powered battery chargers; computer cables; mobile device power cables; mobile device data cables; tablet computer circuits; electrical apparatus, namely, charging stations for charging electric vehicles; batteries” in Class 9.
Absent restrictions in an application and/or registration, the identified goods 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 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 travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) extraordinarily broad wording to describe the goods (“Apparatus, instruments and software for capturing, creating, processing, recording, transmission, reproduction or amplification of sound and/or images” in addition to “parts, fittings, and accessories” therefor) and this wording is presumed to encompass all goods of the type described, including those in registrant(s)’s more narrow identification.
In conclusion, the applicant’s and registrants’ goods are related.
Accordingly, registration is refused under Section 2(d).
PRIOR-FILED APPLICATION
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.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The applicant’s Class 9 identification includes the wording demonstrating the highly descriptive nature of the wording therefor, “integrated circuits.” In reference to Class 15, the attached Internet evidence demonstrates that circuits are a component of electronic keyboards, not to mention electronic musical instruments, generally. See http://www.eleccircuit.com/keyboard-music-circuit/.
Therefore, the mark CIRCUIT is highly descriptive and/or generic for applicant’s goods.
Accordingly, registration is refused under Section 2(e)(1).
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
The identification of goods is indefinite and must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization (International Bureau) in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods and services in International Classes 9, 15, 25 and 35 the classifications assigned by the International Bureau for these goods and services.
The following substitute wording is suggested, if accurate:
International Class 9
Apparatus and instruments and software for capturing, creating, processing, recording, transmission, reproduction or amplification of sound and/or images, namely, {specify apparatus and instruments by common commercial names}; software for capturing, creating, processing, recording, transmission, reproduction or amplification of sound and/or images; audio electrical and electronic apparatus and instruments, namely, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders; software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use}; recorded software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use}; software applications for mobile devices for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use}; sound-recording consoles and operating software therefor; audio equalizers; sound processing equipment, namely, equalizers; sound processing equipment, namely, two channel equalizers; sound processing equipment, namely, parametric, semi-parametric, graphic, peak, and program equalizers; musical instrument digital interface controllers, converters and operating software therefor; downloadable music files; downloadable mobile phone ringtones; digital music downloadable from a computer database or the internet; music-composition software; computers, laptops, tablet computers, smart phones and telecommunications devices, namely, {specify devices by common commercial names}; electronic docking stations for computers, laptops, tablet computers, smart phones and telecommunications devices; electronic docking stations for computers, laptops, tablet computers, smart phones and telecommunications devices for recording, transferring and transmitting video and sound; microphones; amplifiers; microphone pre-amplifiers; stereo pre-amplifiers; outboard audio processing equipment, namely, limiters and compressors; audio over IP network equipment, namely, {specify equipment by common commercial names}; computer network interface devices for transmitting and recording audio; audio interfaces to record music and audio to a computer; data processing apparatus; recorded computer game programmes; magnetic data media, namely, blank magnetic data carriers; blank optical data carriers; tape recorders; blank sound recording carriers; record players; video recorders; portable media player; cameras for photography; acoustic conduits; cabinets for loudspeakers; diaphragms for acoustics, namely, audio speakers; audio and video receivers; acoustic couplers; acoustic pickups, namely, electronic sound pickup for guitars and basses; time delay reverberators, namely, electronic effects processors for use with sound amplifiers; computer peripheral devices; interfaces for computers; data processing equipment, namely, couplers; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; speakers; loudspeakers; horns for loudspeakers; headphones; network communication devices, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; interfaces for computers; electronic terminals for an electronic lottery system which generates lottery tickets; money counting and sorting machines; mechanisms for coin-operated apparatus; Geiger counters; apparatus to check stamping mail; dictating machines; hemline markers; voting machines; electronic tags for goods; photographic, electrostatic and thermic photocopiers; weighing machines; tape measures; luminous or mechanical signals, namely, road signs; radios; televisions; surveying apparatus and instruments; optical apparatus and instruments, namely, optical ports for underwater photography, dome ports for underwater photography, wet diopters, adapter lenses for underwater photography; materials for electricity mains, namely, wires and cables; electronic connections, namely, plugs, sockets and other contacts; remote control apparatus, namely, electronic apparatus for the remote control of industrial operations; integrated circuits; semi-conductors; optical fibres, namely, light conducting filaments; video and television screens; electric installations for the remote control of industrial operations; rods, namely, lightning conductors; electrolysers; fire extinguishing apparatus; radiological apparatus for industrial purposes; clothing and nets for personal use for protection against accidents; fire alarms; eyeglasses; batteries; electric and electronic batteries; exposed x-ray films; [“electrically heated clothes” – this reference appears to be misclassified; applicant must either delete this reference or amend the wording to identify goods properly classified in International Class 9, without exceeding the scope of the original wording as filed]; portable remote control car arresters in the nature of electronic locks; egg-candlers; dog whistles; decorative magnets; electrified fences; electric cables and wires; chargers for batteries; electronic sound recording control boards; digital sound processors; electronic speech and voice synthesizing apparatus; Musical Instrument Digital Interface (MIDI) devices, namely, MIDI controllers other than musical instruments; containers and bags adapted for use with all of the aforesaid goods, namely, {specify containers and bags by common commercial names as well as the goods for which they are specially adapted}; parts, fittings and accessories for all the aforesaid goods, namely, {specify parts, fittings and accessories by common commercial names}
International Class 15
Musical instruments; electronic musical keyboards and keyboards for musical instruments; sheet music stands; musical instrument cases for {indicate specific type of instrument, e.g., cymbals, violins, etc.}; musical boxes; music synthesizers; musical instruments, namely, electronic background music machines; musical instruments controlled by computer, namely, {indicate specific type of instrument, e.g., cymbals, violins, etc.}; electronically operated computer controlled musical instruments, namely, {indicate specific type of instrument, e.g., cymbals, violins, etc.}; parts, fittings and accessories for all the aforesaid goods, namely, {specify parts, fittings and accessories by common commercial names}
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. See TMEP §1402.04.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 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 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.
/Cynthia Y. Rinaldi/
Examining Attorney
Law Office 107
cynthia.rinaldi@uspto.gov
571-272-4685
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.