To: | FUJI JUKOGYO KABUSHIKI KAISHA (trademarks@young-thompson.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85618266 - STARLINK - 8082-1056 |
Sent: | 9/4/2012 4:42:46 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85618266
MARK: STARLINK
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: FUJI JUKOGYO KABUSHIKI KAISHA
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 9/4/2012
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.
SUMMARY OF ISSUES that applicant must address:
Likelihood of Confusion
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 Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Here, the marks are:
STARLINK (applicant)
STARLINK
STARLINK
STARLINK and design
STARLINK WIRELESS and design
LINKSTAR
LINKSTAR
Applicant’s mark is identical to two of the marks and highly similar to the remaining two STARLINK marks. Applicant’s mark shares the dominant STARLINK portion with the STARLINK and design mark and the STARLINK WIRELESS and design mark. The shared STARLINK creates a strong similarity.
Registration 2103132 is for navigational equipment. Applicant’s goods include navigation equipment. Thus, the goods are highly related. Further, applicant’s interface modules are broadly defined and may be used in car navigation. Thus, the goods at issue are highly related.
Registrations 2753736 is for “satellite telecommunications equipment, namely, hub equipment comprised of routers, modems, digital communications and radio equipment and antennas and computer networking terminals.” The use of the goods is not defined and may include vehicle use. Applicant provides various telecommunication goods for use with vehicles. Thus, the goods are related as registrant’s goods may be used to communicate with vehicles. Further, registrant’s goods are electronic. Therefore, registrant’s goods are within the scope of applicant’s broadly defined “electronic machines, apparatus and their parts.”
Registrations 2660480, 3777099, 3777100 and 3115658 are each for various items which may be broadly defined as “electronic machines, apparatus and their parts.” Applicant provides goods broadly defined as “electronic machines, apparatus and their parts.” Thus, applicant’s broad description includes the goods of the registrants. Analyzing the applicant’s and registrant’s goods and/or services for similarity and relatedness is based on the description of the goods and/or services set forth in the application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp. Inc., 648 F.2d 1335, 1337, 209 USPQ 986, 988 (C.C.P.A. 1981).
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.
The marks at issue are either identical or highly similar. The goods are related. Thus, there is a likelihood of confusion and registration must be denied.
Identification of Goods
“Electronic interface modules sold as an integral part of a motor land vehicle for wired and wireless interface of handheld electronic devices which include a communication function, and their parts and fittings;” is acceptable in class 12.
“Electronic interface modules for use in motor land vehicles for wired and wireless interface of mobile phones and handheld telecommunication devices with an automotive electric system, and their parts and fittings;” is acceptable in class 9.
“Telecommunication machines and apparatus for vehicles;” is unacceptable. The goods must be defined in more common commercial terms. Applicant may state “Telecommunication machines and apparatus for vehicles, namely, wireless electronic communication devices for remotely communicating with vehicle electric systems;” in class 9.
“Navigational instruments for vehicles;” is acceptable in class 9.
“Telecommunication machines and apparatus;” is too broad. The specific goods must be defined in more common commercial terms. The goods may include “cellular telephones.”
“Electronic machines, apparatus and their parts” is too broad. The specific goods must be defined in more common commercial terms. The goods may include “GPS navigation devices.”
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).
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class.
(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.gov.uspto.report/trademarks/tm_fee_info.jsp).
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).
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.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Daniel F. Caphaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@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.