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. 79266822
Mark: CRESCENDO
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Correspondence Address: |
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Applicant: SEMO
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1486124
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Summary of Issues that Applicant Must Address
1. Requirement that Applicant Obtain a U.S.-Licensed Attorney
2. Trademark Act Section 2(d) Refusal - Likelihood of Confusion
3. Requirement to Clarify the Identification of Goods
4. Requirement for Information
5. Requirement to Clarify the Mark Description and to Clarify if Color is a Feature of the Mark
Requirement that Applicant Obtain a U.S.-Licensed Attorney
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Trademark Act Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4255254. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the enclosed registration at Attachment 1. Registrant’s mark is CRESCENDO for “Sewing and embroidery machine.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); 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, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Applicant’s mark is CRESCENDO & cube design and registrant’s mark is CRESCENDO in standard characters. The marks are highly similar in appearance and connotation, and are identical in sound, because the literal element in applicant’s mark is identical to registrant’s mark.
The stylization and design element in applicant’s mark do not obviate overall similarity of the marks because consumers are likely to focus on the wording in applicant’s mark in calling for the goods. In addition, registrant’s mark is in standard characters and may be presented in a similar stylization. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant’s goods sold under the CRESCENDO & cube design mark constitute new or additional goods from the same source as the goods sold under the CRESCENDO mark with which they are acquainted or familiar, and that applicant’s proposed mark is merely a variation of the registrant’s mark.
Relatedness of the Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
In this case, the application uses broad wording to describe “machine tools” and “automatic or semi-automatic industrial production lines [machines],” which presumably encompasses all goods of the types described, including registrant’s more narrowly identified goods comprising “Sewing and embroidery machine.” In addition, applicant’s goods comprising “industrial robots; robots for use in industry; robots for machine tools” could include industrial sewing robots, which are a type of sewing machine. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to channels of trade or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods are related.
In the present case, applicant’s goods include “cutters [machines]; cutting machines,” which are closely related to sewing and embroidery machines because these types of goods may be used together to produce textile goods, and because goods of this type commonly originate from a single source under the same mark.
Summary
Because applicant’s mark is highly similar to registrant’s mark, and because applicant’s goods are legally identical or closely related to registrant’s goods, there is a likelihood of confusion as to the source of the goods.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Requirement to Clarify the Identification of Goods
Particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any goods in the identified international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the text that follows in International Class 7 is indefinite and does not appear to describe any goods in the class: “machines for dosing components or liquid” and “industrial testing and checking machines.” See TMEP §1904.02(c)(iii).
Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods in International Class 7 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). The scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).
The wording “potting machines [coating]” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In particular, the bracketed language “coating” seems to be inconsistent with the wording “potting machines.” Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods. In this case, however, because the nature of the goods is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording. See TMEP §1402.01(e).
The wording “machines for assembling by means of gluing” and “machines for assembling by means of sealing” in the identification of goods is too broad and must be clarified to further indicate the nature of the machines in International Class 7, e.g., “industrial”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “headforming machines,” “machines for screwing,” “sizing machines” and “rotary tables for machine tools” in the identification of goods is indefinite and must be clarified to indicate the nature or function of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “soldering machines” and “welding machines” and “machines for marking” and “robots for use in industry” and “robots for machine tools” and “multi-terminal assembly machines with a rotating platform” and “mills [machines]” and “cutters [machines]” and “machines for assembling by means of press-fit [non-weld assembly]” and “machines for dispensing sealant and thermal paste” in the identification of goods is indefinite and must be clarified to further indicate the nature of such goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “pressing machines” and “continuous motion machines” and “machines for processing materials” and “control mechanisms for machines, engines or motors,” and “tools [machine parts]” in the identification of goods is indefinite and must be clarified to specify the types in International Class 7 using the common commercial or generic names for the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “machines for automatic, semi-automatic or manual testing, assembly or packaging” in the identification of goods is indefinite and must be clarified because the term “testing” does not identify a type of machine in International Class 7 and because applicant must specify the types of assembly machines using definite language. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “automatic or semi-automatic industrial production lines [machines]” in the identification of goods is indefinite and must be clarified to specify the particular types of machines that the production lines consist of. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “brushes [machines]” in the identification of goods is indefinite and must be clarified to indicate the nature of the brushes with respect to machines and the type of machine with which the brushes are used. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “molds [parts of machines]” in the identification of goods is indefinite and must be clarified to indicate the purpose of the goods and the type of goods the molds are used to make. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Scope Advisory
Suggested Amendments
Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of
goods and/or services. If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as
this: strikethrough. Applicant should enter its amendments in standard font. If applicant wishes to accept the suggested deletions, applicant
must manually delete the struck through wording in any USPTO response form. Copying and pasting the language below will not result in deletion of the
struck through wording, which will remain within the identification.
Applicant may adopt the following identification of goods, if accurate:
International Class 7: Machine tools, namely, {specify types in Class 7, e.g., metalworking machines
tools, lathes}; machines for dosing components or liquid; potting machines [coating]; industrial machines for assembling by means of gluing;
industrial machines for assembling by means of sealing; headforming machines for metalworking; machines for screwing of {clarify what is
being screwed, e.g., metal}; autogenous soldering machines; riveting machines; crimping machines; {clarify nature, e.g., electric and gas} welding machines; sizing machines for the manufacture of textiles; pressing machines, namely, {specify types in Class 7,
e.g., electric clothes pressing machines}; electromechanical industrial machines for marking; non-weld assembly machines for
assembling {clarify what goods are being assembled, e.g., metal automotive parts} by means of press-fit [non-weld assembly];
industrial assembly machines for dispensing sealant and thermal paste; industrial robots; robots for use in industry, namely, industrial robots; industrial robots for machine tools; machines for automatic, semi-automatic or manual testing, assembly or packaging, namely, {specify
types in Class 7 using generic names, e.g., packaging machines, assembling machines for liquid crystal display devices}; continuous motion machines,
namely, {specify types in Class 7 using generic names, e.g., belt conveyors}; automatic or semi-automatic industrial production lines [machines]
comprised of a series of machines for assembly of {indicate type of goods, e.g., automobiles}; multi-terminal assembly machines with a rotating platform
for assembly of {indicate types of goods, e.g., furniture}; mills [machines] milling machines; cutters
[machines] being cutting machines; cutting machines; machines for processing materials, namely, {specify types in Class 7 using
generic names, e.g., meat processing machines}; rotary printing presses; control mechanisms, namely, hydraulic and pneumatic controls for machines,
engines or and motors; driving chains other than for land vehicles; industrial testing and checking machines; axles
[parts of machines] being parts of machines; machine parts, namely, {specify types of tools, e.g., taps being
machine}tools [machine parts]; blades [parts of machines] being parts of machines; chucks [parts of machines] being parts of machines; rotary tables specially adapted for holding machine tools; belts for
machines; brushes [machines] being parts of {indicate type of machine, e.g., steam cleaning machines}; machine parts, namely, molds [parts of machines] for use in the manufacture of {indicate nature of goods being manufactured, e.g.,
plastic pipes}; stators being parts of machines
For assistance with identifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Requirement for Information
THIS REQUIREMENT APPLIES ONLY TO THE PARTICULAR GOODS INDICATED BELOW.
To permit proper examination of the application, applicant must submit additional product information about applicant’s goods comprising “machines for dosing components or liquid,” “potting machines [coating]” and “industrial testing and checking machines” because the nature of such goods is not clear from the present record. See 37 C.F.R. §2.61(b); TMEP §814. The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials. If these materials are unavailable, applicant must submit similar documentation for goods of the same type, explaining how its own product will differ. Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.
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. However, if applicant opts to delete these goods from the identification, applicant does not need to furnish the requested information. Merely stating that information about the goods 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).
Requirement to Clarify the Mark Description and to Clarify if Color is a Feature of the Mark
To clarify whether color is claimed as a feature of the mark, applicant must satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit (a) a new black-and-white drawing of the mark to replace the color drawing in the record, (b) a statement that no claim of color is made in the international registration, and (c) a description of the literal and design elements in the mark omitting any reference to color. 37 C.F.R. §2.37; TMEP §§807.07(b), 807.12(c); see TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of a design comprising a cube divided into five sections with the word “CRESCENDO” to the right.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors claimed as a feature of the mark and (b) describing where the colors appear in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(b), 807.12(c). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must include a statement indicating that in the description. See TMEP §807.07(d), (d)(iii).
The following color claim and description are suggested, if accurate:
Color Claim: The colors grey, white, and red are claimed as a feature of the mark.”
Mark Description: The mark consists of a design comprising a cube divided into five sections that are, from left to right, grey, white, grey, white and red. To the right is the word “CRESCENDO” in grey, except for the letter “O”, which is red.
How to respond. Click to file a response to this nonfinal Office action
If applicant has any questions about this Office action, please contact the undersigned examining attorney.
/Linda Lavache/
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
linda.lavache@uspto.gov
RESPONSE GUIDANCE