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. 79296854
Mark: STEINEL
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Correspondence Address: |
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Applicant: Steinel GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1557664
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).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Registration of the applied-for mark is refused as to “power-driven tools; cordless screwdrivers; soldering irons; motorised tools; motorised hand tools; dispensing machines; spraying machines; hot air blowers as parts of machines; electric hand tools; automatic welding machines; accessories for all the aforementioned goods” and “Hand-operated hand tools and equipment; cutlery; foil cutters; accessories for all the above goods; pressure roller” because of a likelihood of confusion with the mark in U.S. Registration No. 4519683. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Registrant owns the mark STEINEL. Applicant has proposed the mark STEINEL and design.
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).
The marks create a highly similar commercial impression.
Registrant uses the mark for “Machine tools, in particular for drilling, counterboring, grating, precision boring, thread cutting, milling, lathing, sawing and riveting and appertaining to mechanical tools and appliances, namely, workpiece holding devices and workpiece clamping devices; power operated presses, namely, manual toggle presses, punching and bending presses; inserted tools and appliances for the aforesaid presses, namely, columnar mounts of steel or grey iron, guiding, cutting and spring elements, namely, cutting punches, cutting bushes, punch guide bushes, mounting sleeves and plates for cutting punches; machine parts, namely, coil springs, plate springs, rubber and plastic springs, spring-loaded pressure pieces and saw blades.” Applicant intends to use the mark for “Power-driven tools; cordless screwdrivers; soldering irons; motorised tools; motorised hand tools; dispensing machines; spraying machines; hot air blowers as parts of machines; electric hand tools; automatic welding machines; accessories for all the aforementioned goods” and “Hand-operated hand tools and equipment; cutlery; foil cutters; accessories for all the above goods; pressure roller.”
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. 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)).
In this case, the application uses broad wording to describe its power and motorized tools and equipment, which presumably encompasses all goods of the type described, including registrant’s more narrow machine tools. 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.
Furthermore, to the extent that the goods are not identical, applicant’s goods encompass those providing the same function as registrant’s goods.
The goods are identical in part and otherwise closely related.
When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration as to the specified goods must be refused.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
However, applicant must address the following issues.
IDENTIFICATION OF GOODS AND SERVICES
In Class 1, applicant must clarify the nature of its chemical products and indicate that they exclude fungicides, herbicides, insecticides and parasiticides, if accurate.
In Class 7, applicant must list particular types of power-driven tools, motorised tools, motorised hand tools, dispensing machines, electric hand tools, and accessories. Applicant must also specify how its cordless screwdrivers, soldering irons, and welding machines are powered.
In Class 8, applicant must list particular hand-operated hand tools and equipment and accessories and clarify the nature of its cutlery, foil cutters, and pressure roller.
In Class 9, applicant must clarify the nature of its sensors, detectors, electronic components for lighting purposes, sensor devices, digital sensor devices, measuring sensors, sensors for luminaires, electronic evaluation and signalling apparatus, and electronic detectors against objection theft.
Applicant must list particular types of scientific, research, navigational, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detection, checking, control, rescue and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, storing, regulating or controlling the distribution or use of electricity; electronic installations for lighting, alarm and home automation; home automation equipment; and home network equipment.
The identification for software and mobile applications in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable or recorded. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d). The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau 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, 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).
Applicant should delete the wording “as far as included in class 09” because it is not necessary.
In Class 11, applicant must clarify the nature of its apparatus for lighting purposes, electrical lighting apparatus, torches, parts of electrical luminaires, lighting apparatus and instruments, lighting, lighting with integrated sensors, lighting accessories, accessories for outdoor and indoor lighting, solid-state lighting apparatus, sensor-controlled luminaires; and parts and accessories.
In Class 42, applicant must clarify the nature of its scientific and technological services and research services and related design services and transfer of technical know-how.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods and/or services in International Classes 1, 7, 8, 9, 11, and 42 only, the classes specified in the application for these goods and services. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording, if accurate:
“Chemical preparations for industrial, scientific, photographic, agricultural, horticultural and forestry purposes, except fungicides, herbicides, insecticides and parasiticides; adhesives for industrial purposes; industrial adhesives for use in construction; industrial adhesives for use in plumbing; industrial adhesives for coating and sealing” in International Class 1
“Power-driven tools, namely, [applicant must specify types of power driven tools]; electric hot glue guns; cordless power-operated screwdrivers; electric and gas-powered soldering irons; motorised tools, namely, [applicant must specify types of motorised tools]; motorised hand tools, namely, [applicant must specify types of motorized hand tools]; dispensing machines, namely, [applicant must specify types of dispensing machines, e.g., adhesive tap dispensing machines]; spraying machines; hot air blowers as parts of machines; electric hand tools, namely, [applicant must specify types of electric hand tools]; automatic [applicant must specify, e.g., electric] welding machines; accessories for all the aforementioned goods, namely, [applicant must specify types of accessories]” in International Class 7
“Hand-operated hand tools and equipment, namely, [applicant must specify types of hand-operated hand tools and equipment]; cutlery, namely, [applicant must specify, e.g., table cutlery, scalers, etc.]; hand-operated wine bottle foil cutters; accessories for all the above goods, namely, [applicant must specify types of accessories]; pressure roller, namely, [applicant must specify, e.g., hand-operated rollers for applying adhesives]” in International Class 8
“Sensors, namely, [applicant must specify, e.g., pressure sensors]; detectors, namely, [applicant must specify, e.g., motion detectors]; motion sensors; motion sensors for safety lamps; electronic components for lighting purposes, namely, [applicant must list types of components, e.g., lighting ballasts]; lighting controllers; sensor devices, namely, [applicant must specify, e.g., pressure sensors]; heat sensors; proximity sensors; ambient light sensors; infrared sensors; digital sensor devices, namely, [applicant must specify, e.g., pressure sensors]; heart rate sensor devices; distance sensors; magnetic sensors; measuring sensors, namely, [applicant must specify, e.g., gas sensors for measuring gas concentration]; motion detectors; light sensors for luminaires; [applicant must specify downloadable and/or recorded] sensor software for [applicant must specify function of software, e.g., recording data measured by heat and light sensors]; infrared presence detectors; illumination meters; [applicant must specify downloadable and/or recorded] application software [applicant must specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use]; [applicant must specify downloadable and/or recorded] software [applicant must specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use]; [applicant must specify downloadable and/or recorded] mobile apps [applicant must specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use]; scientific, research, navigational, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detection, checking, control, rescue and teaching apparatus and instruments, namely, [applicant must specify particular types of apparatus and instruments]; apparatus and instruments for conducting, switching, transforming, storing, regulating or controlling the distribution or use of electricity, namely, [applicant must specify particular types of apparatus and instruments, e.g., electricity limiters, electricity distribution consoles, etc.]; electronic installations for lighting, alarm and home automation, namely, [applicant must specify, e.g., home automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, HVAC, security, and electrical power]; motion, presence, brightness, temperature and gas sensors based on semiconductor, infrared, radio and/or microwave technology and associated electronic evaluation and signalling apparatus in the nature of [applicant must specify, e.g., transmitters of electronic signals]; manually operated electrical measuring apparatus, in particular in the form of voltage, continuity, capacitance, resistance and conduction testers; data processing equipment and computers, for applications in lighting and sensor technology and electronic measuring technology, including interface and converter modules for data processing equipment; radiation detectors, in particular detectors for infrared radiation and associated electronic control circuits; acoustic detectors and associated electronic control circuits; electronic detectors against objection theft in the nature of [applicant must specify, e.g., theft alarms] and fire alarms; metal detectors; electrical power line detectors; [applicant must specify downloadable and/or recorded] software for smart home products for [applicant must specify the function of the programs, e.g., operating home automation systems comprised of computer hardware, wireless and wired controllers,]; electronic security system for the home network comprising [applicant must specify components of system]; home automation equipment, namely, [applicant must specify, e.g., home automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances, lighting, HVAC, security, and electrical power]; home network equipment, namely, [applicant must specify, e.g., network routers]; temperature scanners not for medical purposes” in International Class 9
“Apparatus and installations for lighting purposes, namely, [applicant must specify, e.g., lighting fixtures]; electrical lighting apparatus, namely, indoor and outdoor luminaires, garden luminaires, nightlights and sensor-controlled luminaires, the aforementioned lighting apparatus also for use in lighting systems; electrical torches for lighting; electrical luminaires and structural parts thereof, also with integrated sensors; lighting apparatus in the nature of [applicant must specify, e.g., lighting installations], lamps, and lighting instruments in the nature of [applicant must specify, e.g., flashlights]; lighting fixtures, including lighting fixtures with sensors; lighting fixtures with integrated sensors; lighting accessories, namely, [applicant must specify, e.g., lamp shades]; accessories for outdoor and indoor lighting, namely, [applicant must specify, e.g., lamp globes]; solid-state lighting apparatus, namely, [applicant must specify, e.g., LED luminaires]; sensor-controlled electric luminaires; spotlights; structural parts for the aforementioned goods” in International Class 11
“Scientific and technological services and research services and related design services, namely, [applicant must specify, e.g., research, development, and design of sensors]; technical design and technical project planning of electronic systems for lighting, alarm and home automation; technological consulting services relating to [applicant must specify field of consulting services]; scientific and industrial research and development in the field of sensor and lighting technology and electrical and electronic heat, tool and measurement technology; development, programming and implementation of software” in International Class 42
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).
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.
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 so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate: The mark consists of a smaller orange circle to the left of a larger orange circle to the left of the stylized black wording STEINEL.
REQUIREMENT FOR APPLICANT’S EMAIL ADDRESS
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.
REQUIREMENT FOR U.S.-LICENSED ATTORNEY
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).
How to respond. Click to file a response to this nonfinal Office action.
/Kristina Morris/
Kristina Morris
Examining Attorney
Law Office 116
571-272-5895
kristina.morris@uspto.gov (informal queries only)
RESPONSE GUIDANCE