UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/21/2011

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION AS TO CLASS 009 ONLY

Registration of the applied-for mark is refused for applicant’s Class 009 goods because of a likelihood of confusion with the marks in U.S. Registration Nos. 3926336, 2704493 and 2564858.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Applicant has applied to register ATEC for “Consumer electronics products, namely, DVD players, DVD recorders, television sets; home theater systems, namely, audio speakers, audio and video receivers, home theater in box (HTIB) systems including audio receivers, dvd players and audio speakers; MP3 players, MP4 players; portable media devices, namely, portable CD players, portable cassette players, portable radios, portable digital audio players, portable headphones, portable video devices, portable multimedia devices; portable audio systems, namely, stereo shelf systems, boom boxes, portable audio speakers; audio speakers, radios incorporating clocks; universal all-in-one remote controls for television, VCR, DVD; blank video cassette tape; audio and/or video interconnect cables, namely, analog audio interconnect cables, digital audio interconnect cables, analog video interconnect cables, digital video interconnect cables, HDMI cables; USB cables; digital cameras and digital camera accessories, namely cases, memory cards, cables and cleaning kits; digital photo frames; batteries; screen cleaning kits; power strips and circuit overload protection devices; digital display wall mounts.”  The registered marks are ATEC for “battery chargers, rectifiers and parts thereof; portable power supply units,” ATEK for “computer parts and accessories, namely; computer input devices, namely computer mice and computer remote controls, adapters and components for personal digital assistants and computers, namely input/output and memory card adapters, computer cables, cable assemblies comprised of connectors, adapters and cables, cable connectors and electrical connectors, [ power protection devices, namely uninterruptible power supplies, ] computer signal repeaters and computer hubs for interfacing peripheral devices to computer ports,” and ATEK for “computer parts and accessories, namely, computer cables and connectors.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

            Comparison of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks 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).

 

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

In this case, the literal portion of applicant’s mark is identical to Reg. No. 3926336 and is phonetically equivalent to the other two cited marks.  There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  See Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.3 (TTAB 1987); TMEP §1207.01(b)(iv).  The marks in question could clearly be pronounced the same; such 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 background carrier (rectangle) in applicant’s mark does not serve to distinguish the marks and would not likely be recalled. 

 

Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).

 

            Comparison of the Goods

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

In this case, applicant’s batteries are very closely related to the battery chargers and portable power supply units in Reg. No. 3926336 as these are complementary items often sold together (in the case of rechargeable batteries), and applicant’s power strips and circuit overload protection devices are very closely related to, if not legally identical to, the “power protection devices, namely, uninterruptible power supplies” in Reg. No. 2704493 as they appear to all achieve the same purpose of preventing voltage surges.  These power strips and circuit overload protections devices are also very closely related to registrant’s adapters and electrical connectors as these are the kinds of goods used to power or charge electronic devices and protect them from voltage surges.  Lastly, applicant’s A/V cables, USB cables and digital camera cables are very closely related to the “computer cables, cable assemblies comprised of connectors, adapters and cables, cable connectors and electrical connectors,” of Reg. No. 2704493 and the “computer cables and connectors” of Reg. No. 2564858 as these are the kinds of cords used to power or recharge electronic devices. 

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely batteries and battery chargers, and adapters, electrical connectors, wires, cables, power strips, surge protectors, etc. are of a kind that may emanate from a single source under a single mark.  See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Here, because the marks are highly similar and the goods are very closely related, registration is refused under Section 2(d).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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, 1025 (Fed. Cir. 1988).

 

The stated refusal refers to International Class 009 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)        Deleting the class to which the refusal pertains;

 

(2)        Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)        Amending the basis, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

IDENTIFICATION OF GOODS

 

Class 009: The wording “home theater in box (HTIB) systems including audio receivers, dvd players and audio speakers” is indefinite and must be clarified because it includes the open-ended wording “including.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

The wording “portable video devices” and “portable multimedia devices” is indefinite as the exact nature of these “devices” is unknown, e.g., video players, multimedia projectors, etc.  The wording “HDMI cables” is unacceptable as the wording “HDMI” is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No. 3268924.  An applicant may not use a registered mark owned by another party in the identification.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Therefore, applicant must amend the identification of goods to delete the wording “HDMI cables” and substitute the common commercial or generic name of the goods, e.g., video cables, electric cables, etc.

 

Applicant must specify that its “digital photo frames” are for displaying digital pictures and that its “digital display wall mounts” are “brackets specially adapted for setting up flat screen television sets” as opposed to Class 020’s “non-metal audio, video and computer wall mounts.”

 

Lastly, the cleaning kits and screen cleaning kits are likely misclassified as cleaning cloths for camera lenses and camera lens cleaning kits comprised of a brush and also including wipes and a liquid solution are all in Class 021.  It is likely that similar kits for cleaning electronic screens would also be in Class 021, e.g., chamois wiping cloths.

 

Class 020: The wording “audio, vide and home theater furnishings” is indefinite as the exact nature of the goods is unknown, e.g., couches, shelves, etc. and the “cabinets for holding and displaying audio and video equipment” is overly broad as this could include cabinets for loudspeakers in Class 009 or metal cabinets specially adapted to protect telecommunications equipment in the nature of fiber optic cables in Class 009, as opposed to cabinets for personal stereo equipment (not adapted for a specific purpose) in Class 020.  Also, as mentioned for the Class 009 mounts, the “wall mounts and ceiling mounts” must be clarified as “non-metal audio and video wall and ceiling mounts” in order to stay in Class 020.

 

See TMEP §1402.01.

 

Applicant may adopt the following amended identification, if accurate:

 

• Consumer electronics products, namely, DVD players, DVD recorders, television sets; home theater systems, namely, audio speakers, audio and video receivers, home theater in box (HTIB) systems, namely, audio receivers, dvd players and audio speakers; MP3 players, MP4 players; portable media devices, namely, portable CD players, portable cassette players, portable radios, portable digital audio players, portable headphones, portable video players, portable multimedia players; portable audio systems, namely, stereo shelf systems, boom boxes, portable audio speakers; audio speakers, radios incorporating clocks; universal all-in-one remote controls for television, VCR, DVD; blank video cassette tape; audio and/or video interconnect cables, namely, analog audio interconnect cables, digital audio interconnect cables, analog video interconnect cables, digital video interconnect cables; USB cables; digital cameras and digital camera accessories, namely cases, memory cards, cables; digital photo frames for displaying digital pictures; batteries; power strips and circuit overload protection devices; brackets specially adapted for setting up flat screen television sets  [INT. CLASS 009]

 

• Furniture, namely, audio, video and home theater furnishings in the nature of {SPECIFY by common commercial name, e.g., couches, shelves, etc.}, entertainment centers, home theater furniture, television stands, cabinets for holding and displaying audio and video equipment, not including especially adapted cabinets for loudspeakers or fiber optic telecommunications cables; A/V equipment mounting brackets, namely, non-metal audio and video wall and ceiling mounts  [INT. CLASS 020]

 

• Camera lens cleaning kits comprised of a brush and also including wipes and a liquid solution; electronic screen cleaning kits comprised of chamois wiping cloths and a liquid solution  [properly in INT. CLASS 021]

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

CLASSIFICATION OF GOODS

 

If applicant adopts the suggested amendment of the identification of goods, then applicant must amend the classification to add International Class 021, as shown above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that are classified in at least three classes; however, the fees submitted are sufficient for only two classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. 

 

Note: The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations.  To access the TARR database, applicant will need to provide an application serial number or registration number.  The TARR database is available 24 hours a day, 7 days a week.

 

 

 

Toby E. Bulloff

/Toby E. Bulloff/

Trademark Examining Attorney

Law Office 117

p: (571) 270-1531

f: (571) 270-2531

toby.bulloff@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 11/21/2011 FOR

SERIAL NO. 85385171

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 11/21/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.