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. 79223354
MARK: AJAX
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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: TOVARYSTVO Z OBMEZHENOIU VIDPOVIDALNISTI ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1380815
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.
Registration Refused – Section 2(d) Likelihood of Confusion
The applied-for mark is “AJAX” with design for a variety of software, electrical goods, and digital media in International Class 9, such as “Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Batteries; electric; Computer software; Electronic publications, downloadable” in International Class 9.
The registered marks in U.S. Registration Nos. 0868337 and 2174355 is “AJAX MAGNETHERMIC” in typed characters and with design for, inter alia, “Induction heating transformers and accessories therefor” and “Electrical power supplies for induction furnaces” in International Class 9.
The registered mark in U.S. Registration No. 2080842 is “SIMONE AND AJAX” for “Comic books and comic magazines” in International Class 16.
The registered mark in U.S. Registration No. 4073280 is “OPERATION AJAX” in standard characters for “Providing online non-downloadable interactive comic books and graphic novels” in International Class 41.
The registered mark in U.S. Registration No. 4279493 is “AJAXCRUD” in standard characters for “Providing temporary use of a web-based software application for use in database management, data display, and data processing” in International Class 42.
The registered mark in U.S. Registration No. 4259905 is “AJAX CNC” for “Electronic controls for machine tools, metal cutting equipment and automated machines, consisting of computer firmware, computer hardware, computer interface boards, computer programs and software, computer peripherals, workstations, controllers and motion sensitive switches and sensors” in International Class 9.
The registered mark in U.S. Registration No. 5131701 is “AJAX” with design for, in relevant part, “Military educational apparatus and simulators, namely, vehicle drive training simulators; simulators for training military personnel in the use of firearms; simulators for training military personnel in the driving of vehicles; simulators for training operators in weapons systems control; weapon simulators; military training software” in International Class 9.
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); TMEP §§1207.01 et seq.
Comparison of Marks
In this instance, the registered marks encompass the entirety of the wording in the applied-for mark “AJAX”. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The inclusion of the terms “CNC”, “CRUD”, “SIMONE” “MAGNETHERMIC”, and “OPERATION” in the registered marks does not obviate the likelihood of confusion. In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Moreover, in many of the registrations, the shared term “AJAX” is the first term in the mark and/or the additional matter is disclaimed. Consumers are generally more inclined to focus on the first word in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”). And disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); TMEP §1207.01(b)(viii), (c)(ii). Thus, in a registered mark, such as “AJAX CNC”, the shared term “AJAX” is likely to be considered the source-indicating matter as it is the first term and “CNC” describes a feature of the registrant’s goods.
Similarly, the marks remain confusingly similar despite the inclusion of a design element in the applied-for mark. When evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and services because it is that portion of the mark that consumers use when referring to or requesting the goods and services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911.
Based on the foregoing, the applied-for mark and registered marks are sufficiently similar to find a likelihood of confusion.
Comparison of Goods and Services
The likelihood of confusion determination is based on the description of the goods and 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). Absent restrictions in an application and/or registration, the identified goods and 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). Additionally, unrestricted and broad identifications are presumed to encompass all goods and services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
In this case, the identifications set forth in the application and many of the registrations hasve no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and services travel in all normal channels of trade, and are available to the same class of purchasers. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
Furthermore, the identification of goods in the application uses broad wording to describe its goods, such as “computer software”. This wording is presumed to encompass all goods of the type described, including the goods and software functions set forth in the registrants’ more narrow identifications. For example, the applicant’s “computer software” would encompass computer software for use in database management or military training, which is identical to the functions of the registrants’’ software. Similarly, the applicant’s “computer hardware” and “computer peripherals” would include those used in the context of metal cutting equipment and machinery and its electronic publications would include comic books in downloadable form, which is identical to the content of the registrants’ print and online publications.
Therefore, the applicant’s and the 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).
Conclusion
Because the applicant’s applied-for mark and the registered mark are similar and the goods and/or services are related, registration is refused for a likelihood of confusion under Section 2(d).
Identification of Goods
The wording “Measuring, signalling, checking (supervision), life-saving apparatus and instruments” and “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity” in the identification of goods is indefinite and must be clarified because the applicant does not indicate the common commercial or generic name for its goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, this wording could refer to life jackets, pressure measuring apparatuses, signalling whistles, or electrical transformers or a variety of other measuring, electrical, or life-saving devices. Therefore, where indicated, the applicant must specify or indicate the common commercial or generic name for its International Class 9 goods.
In addition, the following entries are unacceptable because the applicant does not specify the nature or type of its goods: “magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; magnetic disks; smart cards (integrated circuit cards); compact discs (read-only memory); videotapes; optical discs, optical data media; USB flash drives”. Specifically, the applicant must indicate whether the goods are blank or pre-recorded media. If the goods are pre-recorded, the applicant must further specify the content or subject matter featured thereon. Thus, where indicated, the applicant must revise the entries to further specify the nature thereof.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9 (i.e., International Classes 41 and 42), any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
Additionally, the following entries in International Class 9 are indefinite because the applicant does not specify the nature or intended use or purpose of the goods: “remote control apparatus; connected bracelets; electric measuring devices; measures; high-frequency apparatus; branch boxes; detectors; telerupters; push buttons; encoded magnetic cards”. For example, an entry for remote controls must indicate the intended use thereof, such as remote control apparatuses for televisions. Similarly, measures and detectors must clarify the nature or type thereof, such as tape measures and motion or smoke detectors. Therefore, the applicant must revise these entries to clarify the nature or use of the goods.
The wording “printers for use with computers” is unacceptable because the wording is too broad and could encompass goods in multiple international classes. In particular, this wording could encompass 3D printers in International Class 7 as well as document printers in International Class 9. As noted, the applicant may only revise the entry to clarify an International Class 9 nature for these goods. Therefore, the following would be an acceptable amendment to this wording: “Document printers for use with computers”.
Moreover, the wording “electronic publications, downloadable” must be revised to specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See TMEP §1402.03(e). If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id.
Further, the following entries are unacceptable because the applicant does not clearly indicate the nature of the goods: “navigational instruments; intercommunication apparatus; transmitters; electric loss indicators; quality indicators; electric alarm; anti-theft warning apparatus; distribution boards; signals, luminous or mechanical; alarms; signal lanterns; observation instruments; heat regulating apparatus”. For example, navigational instruments must clarify the goods are electric navigational instruments to properly classify the goods in International Class 9 as electronics. Similarly, alarms could refer to smoke or theft alarms and, therefore, must clearly indicate the nature or type of alarm. Thus, the applicant must revise these entries, where indicated, clarify the nature of these goods.
The examining attorney has indicated below using “{ }” where the applicant must be specific. In addition, the examining attorney has bolded and underlined additions to the applicant’s original identification of goods.
Applicant may adopt the following identification of goods, if accurate:
Class 009: Measuring, signalling, checking and supervision, life-saving apparatus and instruments, namely, {specify Class 9 goods, e.g., pressure measuring apparatus and signalling whistles}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electrical transformers; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank compact recording discs; blank compact discs, DVDs and other digital recording media, namely, blank digital video cassettes; data processing equipment, computers; computer software for {specify function, e.g., database management}; accumulators, electric; acoustic couplers; remote control apparatus for {indicate Class 9 device, e.g., televisions}; audio- and video-receivers; audiovisual teaching apparatus, namely, video projectors; batteries, electric; cordless telephones; computer memory devices; connected bracelets in the nature of magnetically encoded identification bracelets; bullet-proof waistcoats; electric measuring devices for clamp meters for measuring electricity; tape measures; high-frequency apparatus, namely, telecommunication towers; branch boxes, namely, electrical terminal boxes; video screens; camcorders; video baby monitors; video telephones; viewfinders, photographic; sighting telescopes for firearms; telescopic sights for firearms; magnifying peepholes for doors; loudspeakers; motion detectors; smoke detectors; warning bells; dictating machines; blank magnetic disks; telerupters in the nature of electric light switches; electric installations for the remote control of industrial operations; electric door bells; electro-dynamic apparatus for the remote control of signals; electrified fences; electronic publications, downloadable, in the nature of {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter}; electronic interactive whiteboards; visual display units, namely, electronic pens; encoded identification bracelets, magnetic; locks, electric; electronic agendas; voltage surge protectors; sound alarms; sound recording carriers, namely, blank compact discs; acoustic conduits; electric junction boxes; data processing equipment, namely, couplers; connections for electric lines; connections, electric; data processing equipment, namely, readers; bar code readers; pressure indicators; interfaces for computers; memory cards for video game machines; integrated circuit cards, namely, blank smart cards; encoded key cards; mouse pads; push buttons in the nature of electronic computer hardware for bells; cinematographic cameras; read-only memory, namely, blank compact discs; encoded magnetic identity cards; computer hardware; computer game software; joysticks for use with computers, other than for video games; computer keyboards; computer peripheral devices; document printers for use with computers; magnetic tape units for computers; downloadable software, namely, computer programs for {specify function or purpose, namely, database management}; computer programmes, recorded, for {specify function or purpose, namely, database management}; computer operating programs, recorded; cabinets for loudspeakers; battery boxes; laptop computers; magnets; decorative magnets; magnetic encoders; blank magnetic computer tapes; blank videotapes; crash test dummies; materials for electricity mains, namely, electric wires and cables; megaphones; portable media players; microprocessors; computer peripherals, namely, computer mouse; microphones; mobile telephones; cell phones; modems; computer hardware, namely, computer monitors; computer programs, namely, computer software for virus monitoring; electric navigational instruments; headphones; notebook computers; blank optical discs; optical data media, namely, blank optical discs; intercommunication apparatus, namely, computer networking hardware; speaking tubes; transmitters of electronic signals; telecommunication transmitters; tablet computers; plates for batteries; wafers for integrated circuits; fire alarms; electric loss indicators, namely, battery testers; quantity indicators, namely, electronic indicator boards; computer software applications, downloadable, for {specify function or purpose, e.g., use in database management}; time recording apparatus; Global Positioning System (GPS) apparatus; video recorders; data processing apparatus; record players; computer software, recorded, for {specify function or purpose, e.g., use in database management}; slide or photograph projection apparatus; projection screens; theft prevention installations, electric, namely, theft alarms; anti-theft warning apparatus, namely, theft alarms; processors in the nature of central processing units; electric control panels; baby monitors; transmitting sets, namely, telecommunications transmitters; radios; radiotelephony sets; walkie-talkies; regulators, namely, light dimmers, electric; demagnetizing apparatus for magnetic tapes; identity cards, magnetic; electricity distribution consoles; distribution boards, namely, electricity distribution consoles; whistle alarms; signals, luminous or mechanical, namely, {specify Class 9 goods, e.g., vehicle traffic signals}; signal bells; alarm signal bells, electric; optical signal lanterns; smoke alarms; signalling whistles; signalling panels, luminous or mechanical, namely, {specify Class 9 goods, e.g., vehicle traffic signals}; sirens; data processing equipment, namely, scanners; smartwatches; smartglasses; smartphones; luminous signals, namely, flashing safety lights; monitoring apparatus, namely, electric oxygen for environmental use; observation instruments, namely, telescopes; bags adapted for laptops; electronic chips for the manufacture of integrated circuits; integrated circuits; heat regulating apparatus, namely, climate control system consisting of digital thermostats and heating control devices; blank USB flash drives; digital signs; covers for smartphones; sleeves for laptops
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
Additionally, for applications 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); and the classification of goods may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another. 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. See TMEP §1402.04.
Complete Mark Description Required
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the stylized term “AJAX” beneath an arrow design. The arrow design is composed of several geometric shapes.
Request for Additional Information
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Response Guidelines
For this application to proceed further, applicant must explicitly address each refusal and 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(a)(1), (b)(1).
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than authorized Canadian 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. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
/Thomas Young/
Examining Attorney
Law Office 120
thomas.young@uspto.gov
(571) 272-5152
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.
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.