United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79295967
Mark: IWAVE
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Correspondence Address:
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Applicant: Fronius International GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1555576
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).
SEARCH OF USPTO DATABASE OF MARKS
Email address required
Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
U.S.-Licensed Attorney Required
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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).
Section 2(d) Refusal – Likelihood of Confusion
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 and differences in the marks.”); TMEP §1207.01.
In the present case, the applied-for mark is IWAVE in standard characters for use with “Current sources, in particular inverters [electricity], frequency converters, electrical inverters for use in plasma welding; transformers, control systems for handling devices or robots, microprocessor control systems for all aforementioned goods; parts of all aforementioned goods as far as not included in other classes” in International Class 9.
The registered mark is IWAVE in standard characters for use, in relevant part, with “Audio speakers; Wireless indoor and outdoor speakers; Automotive mounts specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Stands specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Wireless receivers and transmitters for portable media players; Battery chargers specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Battery packs; Auxiliary battery packs; Electric wires and cables; Electrical connectors; Screen protectors comprised of tempered glass or plastic adapted for use with portable electronic devices” in International Class 9.
COMPARISON 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).
Here, the applied-for mark and the registered mark are each IWAVE in standard characters. 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), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). 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. Id. Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS
Here, the applied-for mark is for use with “Current sources, in particular inverters [electricity], frequency converters, electrical inverters for use in plasma welding; transformers, control systems for handling devices or robots, microprocessor control systems for all aforementioned goods; parts of all aforementioned goods as far as not included in other classes” in International Class 9.
The registered mark is for use, in relevant part, with “Audio speakers; Wireless indoor and outdoor speakers; Automotive mounts specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Stands specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Wireless receivers and transmitters for portable media players; Battery chargers specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Battery packs; Auxiliary battery packs; Electric wires and cables; Electrical connectors” in International Class 9.
Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
In this case, the application uses broad wording to describe its goods, which presumably encompasses all goods of the type described, including registrant’s more narrow goods. 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). For example, applicant’s “Current sources, in particular inverters [electricity], frequency converters, electrical inverters for use in plasma welding” may include registrant’s “Wireless receivers and transmitters for portable media players; Battery chargers specially adapted for personal electronic devices, namely, smartphones, portable music players and tablet computers; Battery packs; Auxiliary battery packs; Electric wires and cables; Electrical connectors”. In addition, applicant’s broad wordings of “transformers, control systems for handling devices or robots, microprocessor control systems for all aforementioned goods; parts of all aforementioned goods as far as not included in other classes” may encompass registrant’s “Wireless receivers and transmitters for portable media players” and “Battery packs; Auxiliary battery packs; Electric wires and cables; Electrical connectors”. 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.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion and registration is refused.
Amendments to the Identification Required
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
The wording “control systems for handling devices or robots” in the identification of goods is indefinite and must be clarified as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The electronic nature of the control system in International Class 9 should be specified. Applicant must also clarify the systems by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d). See the bold text below for acceptable options for amendments.
As such, the wording “devices” is indefinite and should be clarified by listing the common commercial or generic names for the devices and/or noting that the devices are all types of machines controlled by the electronic control system. See the bold text below for acceptable options for amendments.
An application must specify, in an explicit manner, the particular goods 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, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods specified using definite and unambiguous language.
The wording “microprocessor control systems for all aforementioned goods” in the identification of goods is indefinite and must be clarified because the wordings “microprocessor control systems” and also “for all aforementioned goods” are each indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the systems by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d). See the bold text below for acceptable options for amendments.
Additionally, the wording “for all aforementioned goods” should be amended to state the common generic terms of the aforementioned goods of which the microprocessor control systems are for.
The wording “parts of all aforementioned goods as far as not included in other classes” in the identification of goods is indefinite and must be clarified to specify the common commercial or generic name(s) of the parts, as discussed above, and/or to list the common commercial or generic name(s) of the definite goods in International Class 9 of which the parts are of, such as the inverters and transformers in the identification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See the bold text below for acceptable options for amendments.
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may substitute the following wording, if accurate:
International Class 9: Current sources, in particular electricity inverters [electricity], frequency converters, electrical inverters for use in plasma welding; transformers, electronic control systems composed of electronic controllers for handling devices in the nature of machines and or robots, microprocessor
control systems composed of microprocessors and integrated transmitters and receivers for all aforementioned goods electricity inverters, frequency converters and transformers; parts of all aforementioned goods electricity inverters, frequency converters and transformers as far as not included in other classes
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Rebecca T. Caysido/
Trademark Examining Attorney
Law Office 123
571-270-0926
Rebecca.Caysido@uspto.gov
RESPONSE GUIDANCE