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. 79288335
Mark: NISSAN
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Correspondence Address: |
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Applicant: Nissan Jidosha Kabushiki Kaisha (also tr ETC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1537731
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).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
PARTIAL REFUSAL – AS TO CLASS 9
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5846801. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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 and/or services. 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 [or services] 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, the marks create substantially similar commercial impressions because the applied-for mark, NISSAN, is phonetically similar to the registered mark, NESON. 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 likelihood of confusion is not negated even though the applied-for mark contains a design element. 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)).
Therefore, the marks are confusingly similar.
Similarity 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).
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Applicant’s goods are “Measuring apparatus; measuring instruments; chargers; battery chargers; electric batteries for vehicles; electrical cells and batteries; fuel cells; intercommunication apparatus; navigation apparatus for vehicles (on-board computers); computer software; computer programs; downloadable applications for use with mobile devices for the management and charging of electric batteries for vehicles; cables, electric; wires, electric; electronic publications, downloadable; anti-theft warning apparatus; theft prevention installations, electric; keys (encoded -); inverters [electricity]; apparatus for recording of sound; apparatus for recording of images; pressure measuring apparatus; cases adapted for computers; cases for keys (encoded-); CD storage wallets; cell phone cases; cell phone straps; computer peripheral devices; mouse [computer peripheral]; mouse pads; spectacles [optics]; spectacle cases; eyeglass cords; straps for flash memories; protective helmets; straps for tablet computers; laser pointers; camera monopods; tripods for cameras; computer, electronic and electric cable managers, organizers and keepers; selfie sticks [hand-held monopods]” in Class 9.
Registrant’s goods are “data cables; USB cables” in Class 9.
In this case, the application uses broad wording to describe “cables, electric” and “wires, electric”, which presumably encompasses all goods of the type described, including registrant’s more narrow “data cables; USB cables”. 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. 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 nature, type, 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.
Therefore, upon encountering the applied-for mark and the registrant’s mark for substantially similar goods, consumers are likely to be confused and mistakenly believe that the applicant’s goods and the registrant’s goods emanate from a common source or are otherwise connected in some way. Accordingly, registration of the applied-for mark is refused under Section 2(d) because of a likelihood of confusion.
AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
Numerous entries in the Identification of Goods and Services are indefinite and require clarification for the reasons specified below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must further clarify these entries.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
The term EWALLETS® is a registered mark that is not owned by applicant and this term, or the hyphenated form “e-wallets,” must be deleted from the identification and replaced with the common commercial or generic name for these goods, such as “electronic wallets.” TMEP §1402.09; see 37 C.F.R. §2.32(a)(6). See attached information about U.S. Registration No. 3466971.
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
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Entry/Entries |
Issue |
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Measuring apparatus; measuring instruments; chargers |
These entries are indefinite because the type is not specified and can refer to goods for various uses |
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intercommunication apparatus; anti-theft warning apparatus; theft prevention installations, electric; keys (encoded -); cases for keys (encoded-); straps for flash memories; computer, electronic and electric cable managers, organizers and keepers; audible warning systems for cycles |
These entries are indefinite because it is unclear what the provided goods consist of/what the goods are. Applicant must further clarify the nature of these goods |
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Computer software; computer programs |
Indefinite because applicant has not specified whether these goods are downloadable or recorded and has not stated their function |
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electronic publications, downloadable |
Indefinite because the type and field of publication is not specified |
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Vehicles for locomotion by land, air, water or rail; electric vehicles; recreational vehicles (rv); |
The type of vehicle is not specified |
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Windshields; anti-skid chains |
The goods need to specify what they are for, such as vehicles |
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vehicle covers [shaped]; seat covers for vehicles |
It is unclear what shaped refers to and the goods need to specify they are fitted |
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retail or wholesale services for land vehicles, structural parts and fittings therefor |
Does not specify the type of service, such as retail store services |
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commercial information and advice for consumers [consumer advice shop] |
This wording is no longer acceptable and has been replaced with “Commercial information and advice for consumers in the choice of products and services” |
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Insurance; financial affairs; monetary affairs; real estate affairs; credit and cash card services; insurance services relating to vehicles; providing of comprehensive warranty services for land vehicles, structural parts and fittings therefor; extended warranty insurance services; debit card services; e-wallet payment services; Transport; travel arrangement; |
These entries are all indefinite because the specific type of service provided is not mentioned. Applicant must further clarify the nature of all of these services, as suggested below |
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electricity storage |
It is currently unclear that these are services. Applicant should add providing to make clear this is a service |
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route planning [navigation services] |
Indefinite because it is unclear that these are travel-related services |
Applicant may adopt the following wording, if accurate:
CLASS 9 {specify type, e.g., pressure} measuring apparatus; Tool measuring instruments; chargers for {specify, e.g., smartphones}; battery chargers; electric batteries for vehicles; electrical cells and batteries; fuel cells; intercommunication apparatus being {specify, e.g., intercoms}; navigation apparatus for vehicles in the nature of on-board computers; {specify downloadable or recorded} computer software for {specify function}; {specify downloadable or recorded} computer programs for {specify function}; downloadable applications for use with mobile devices for the management and charging of electric batteries for vehicles; cables, electric; wires, electric; electronic publications, downloadable, in the nature of {indicate nature of publication} in the field of {indicate field}; anti-theft warning apparatus being theft alarms; theft prevention installations, electric being theft alarms; encoded key cards; inverters for electricity; apparatus for recording of sound; apparatus for recording of images; pressure measuring apparatus; cases adapted for computers; cases specially adapted for encoded key cards; CD storage wallets; cell phone cases; cell phone straps; computer peripheral devices; mouse being computer peripheral; mouse pads; spectacles being optics; spectacle cases; eyeglass cords; straps specially adapted for blank flash memory cards; protective helmets; straps for tablet computers; laser pointers; camera monopods; tripods for cameras; computer, electronic, and electric cable managers, organizers and keepers being sleeves for electric cables; selfie sticks being hand-held monopods
CLASS 12 Vehicles for locomotion by land, air, water and rail, namely, {specify type, e.g., automobiles, light rail vehicles}; automobiles; electric-powered motor vehicles; waggons; trucks; vans being vehicles; sport utility vehicles; motor buses; recreational vehicles, namely, rv campers; sports cars; racing cars; lorries; fork lift trucks; tractors; towing tractors; trailers; semi-trailers; structural parts for automobile; engines for land vehicles; motors for land vehicles; bodies for vehicles; vehicle chassis; transmissions, for land vehicles; transmission shafts for land vehicles; gearing for land vehicles; clutches for land vehicles; axles for vehicles; vehicle suspension springs; shock absorbers for automobiles; vehicle wheels; tires for vehicle wheels; hubs for vehicle wheels; adhesive rubber patches for repairing tire inner tubes; brakes for vehicles; brake pads for land vehicles; windshields being land vehicle parts; windshield wipers being vehicle parts; vehicle bumpers; steering units for land vehicles; horns for vehicles; direction signals for vehicles; vehicle seats; safety belts for vehicle seats; head-rests for vehicle seats; reversing alarms for vehicles; anti-theft devices for vehicles; air bags being safety devices for automobiles; rearview mirrors; tailboard lifts being parts of land vehicles; spoilers for vehicles; luggage carriers for vehicles; mudguards; anti-skid chains for vehicles; fitted vehicle covers; fitted seat covers for vehicles; air pumps being vehicle accessories; ski carriers for vehicles; cigar lighters for land vehicles; safety seats for children; hoods for vehicles; doors for vehicles; space vehicles; aeroplanes; seaplanes; aircraft; carts; motorcycles; boats; ferry boats; ships; yachts; bicycles; audible warning systems for cycles in the nature of security alarms; cycle chains; motors for cycles; cycle saddles; ashtrays for automobiles; brake discs for vehicles; driverless cars being autonomous cars; side view mirrors for vehicles; engine mounts for land vehicles; caps for vehicle petrol and gas tanks; torque converters for land vehicles
CLASS 35 Advertising; business management; business administration; office functions; retail and wholesale store services for land vehicles, structural parts and fittings therefor; sales promotion for others; compilation of information into computer databases; systemization of information into computer databases; advertising and publicity services for vehicles; import-export agency services; providing information about land vehicles, namely, consumer product information and price comparison information; providing price-comparison information in the field of fuel; Commercial information and advice for consumers in the choice of products and services; Business administration of consumer loyalty programs; organization of exhibitions for commercial or advertising purposes; organization of trade fairs; Business management in the field of vehicle fleets for others
CLASS 36 Insurance brokerage; financial affairs, namely, financial information, management and analysis services; monetary affairs, namely, financial information, management and analysis services; real estate affairs, namely, real estate agency services; accident insurance underwriting; brokerage for hire-purchase; credit and cash card payment processing services; financial information; financing services; issuance of credit cards; appraisal of used automobiles; insurance services relating to vehicles, namely providing vehicle insurance rate quotes; providing of comprehensive extended warranty services for land vehicles, structural parts and fittings therefor, namely, service contracts; extended warranty insurance services, namely, service contracts; financing of loans; automobile lease financing; lease purchase financing of vehicles; debit card services, namely, processing of debit card payments; electronic wallet payment services, namely, bill payment services provided via an electronic wallet
CLASS 37 Repair or maintenance of land vehicles, parts and fittings therefor; providing information about repair or maintenance of land vehicles, parts and fittings therefor; repair or maintenance of chargers for electrical vehicles; repair or maintenance of batteries and cells; repair or maintenance of telecommunication machines and apparatus; vehicle breakdown repair services; charging of electric vehicles
CLASS 39 Transport services for flightseeing tours; packaging and storage of goods; travel arrangement, namely, arranging transport for travelers; providing transportation information; car transport; vehicle rental; vehicle breakdown towing services; passenger transport; transportation information; providing road and traffic information; car parking; leasing of vehicles; GPS navigation services; car sharing services; automotive subscription services, namely, providing temporary use and rental of automobiles on a reoccurring daily, weekly, monthly, or yearly basis; Providing electricity storage; electricity distribution; distribution and transmission of electricity between electric vehicle batteries and battery terminals for household purposes enabled by downloadable applications for the management of distribution and transmission of electricity for use with mobile devices; providing information relating to vehicle driving services; providing traffic information; route planning being travel navigation services
Scope Advisory. Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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 and/or services 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 and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
ID Manual. 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.
MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of the wording “NISSAN” surrounded by two half-circles.
U.S. COUNSEL REQUIRED
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.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).
How to respond. Click to file a response to this nonfinal Office action.
/Luke Cash Browning/
Luke Cash Browning
Trademark Examining Attorney
Law Office 127 | (571) 270-5767
Luke.Browning@USPTO.gov
RESPONSE GUIDANCE