U.S. Application Serial No. 79349459
Mark: INLAND
| Correspondence Address:
DLA PIPER (CANADA) LLP Attn: Christopher L. Bennett Suite 2800, PARK PLACE, 666 BURRARD STREET VANCOUVER BC V6C 2Z7 CANADA |
Applicant: Inland Industries Ltd.
Reference/Docket No. N/A
Correspondence Email Address:
International Registration No. 1682539
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).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL - LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2303488 and 2057209. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied-for mark is INLAND for:
Class 35: Online and retail sales administration of agricultural equipment; online and retail sale of construction vehicles and equipment; online and retail sale of trucks; online and retail of truck parts; sale of heavy equipment and heavy equipment parts for use in the construction, forestry, and mining industries; sales management of trailers, namely, tractor trailers, cargo trailers, equipment trailers, and construction trailers; arranging of auction sales of farm equipment
Class 37: Leasing of construction equipment; leasing of heavy equipment; maintenance and repair of land vehicles; repair and maintenance of agricultural
machines and implements; repair and maintenance of construction machines; repair and maintenance of cultivating machines and implements; repair and maintenance of harvesting machines and implements;
repair and maintenance of mining machines; servicing of trucks and truck parts; servicing of farm equipment and heavy equipment
Class 39: Leasing of trucks; rental of traction vehicle and trailers; rental of vehicles; truck and trailer rental
Class 44: Farming equipment rental; leasing of agricultural equipment; providing information relating to farming equipment rental; rental of agricultural equipment; rental of farming equipment
The registrant's first mark is INLAND TRUCK PARTS & SERVICE for:
Class 37: repair of trucks, truck parts, farm equipment, farm equipment parts, buses and bus parts; maintenance of trucks, farm equipment, buses
and truck parts; and rebuilding of truck parts and bus parts
Class 40: custom building of truck parts
Class 42: distributorships in the field of truck parts, bus parts and farm equipment parts
The registrant's second mark is INLAND TRUCK PARTS COMPANY for:
Class 37: maintenance, repair, rebuilding and custom building of truck, bus and farm equipment parts
Class 42: distributorships in the field of truck, bus and farm equipment parts and accessories
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
Comparison of Marks
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); 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, applicant’s mark and registrant’s mark are similar in appearance, sound, and overall commercial impression. Applicant's mark and the registrant's marks share the same wording of "INLAND."
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (holding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (holding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The fact that the cited registrations contain the additional wording of "TRUCK PARTS & SERVICE" and "TRUCK PARTS COMPANY" respectively does not obviate the refusal.
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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *41 (TTAB 2022); TMEP §1207.01(b)(viii), (c)(ii).
Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.
Comparison of Services
The compared services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i); see Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *44 (TTAB 2022) (quoting In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006)).
Determining likelihood of confusion is based on the description of the services 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)).
In this case,
the services at issue are related because the services commonly emanate from the same commercial entity. In support thereof, the examining attorney has
attached the following Internet evidence, consisting of various third party websites establishing that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Additionally, the services 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)); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *49. Thus, applicant’s and registrant’s services are related.
Conclusion
Because the applied-for mark and the registered marks are similar and the services are related, registration is refused for a likelihood of confusion under Section 2(d).
The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in
support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
EMAIL ADDRESS REQUIRED
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); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
U.S. ATTORNEY REQUIRED
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories 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); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as outside of the United States or its territories. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/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. 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); TMEP §604.01.
AMENDED IDENTIFICATION OF SERVICES REQUIRED - Class 35 and 37 Only
Several wording in the identification of services is indefinite and must be clarified because and must be clarified because they do not state the specific type of goods and/or services, or purpose of the service provided by the applicant. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
T
he examining attorney has bolded and underlined additions to the applicant’s
original identification of services.
Specifically, the wording "retail sales" in Class 35 must clarify that these are retails store services and what is featured in the store. Additionally, the wording "servicing" in Class 37 must clarify that these are repair and maintenance services.
The wording bolded below offers suggestions and clarifications for the problematic wording, which applicant may substitute, if
accurate:
Class 35: Online retail store and retail store services
featuring agricultural equipment; Online retail store and retail store services featuring
construction vehicles and equipment; Online retail store and retail store services featuring of trucks;
Online retail store and retail store services featuring truck parts; Online retail
store and retail store services featuring of heavy equipment and heavy equipment parts for use in the construction, forestry, and mining
industries; sales management services of trailers, namely, tractor trailers, cargo trailers, equipment trailers, and construction trailers; arranging of
auction services of farm equipment
Class 37: Leasing of construction equipment; leasing of heavy construction equipment;
maintenance and repair of land vehicles; repair and maintenance of agricultural machines and implements; repair and maintenance of construction machines; repair and maintenance of cultivating
machines and implements; repair and maintenance of harvesting machines and implements; repair and maintenance of mining machines; servicing, namely, repair and maintenance of trucks and truck parts; servicing,
namely, repair and maintenance of farm equipment and heavy equipment
In a Trademark Act Section 66(a) application, classification of
goods and/or services
may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or 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 see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.