To: | Shimano Inc. (rgilmore@mabr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86148877 - ECOVISION - S1008.81113U |
Sent: | 1/17/2014 1:37:15 PM |
Sent As: | ECOM104@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86148877
MARK: ECOVISION
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Shimano Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/17/2014
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.
The applicant’s mark is ECOVISION in standard characters for “Bicycle components and accessories, namely, hubs, internal gear hubs, bicycle hubs which contains a dynamo inside, hub quick release levers, hub quick release devices, gear release levers, gear shift levers, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, pulleys for use with bicycles, chains for bicycles, shift cables, cranks, crank sets, front chain wheels, pedals, brake levers, front brakes, rear brakes, brake cables, brake shoes, brake rotors, brake pads, rims, wheels, spokes, spoke clips, bottom brackets, seat pillars, seat pillar quick release, head parts for frame-fork assembly, suspensions, handlebars, handlebar stems, grips for handlebars, bar ends, seat posts, saddles, derailleurs controlled by computer, gear position indicators for bicycles; structural parts for bicycles.” The registrant’s mark is ECOVISION in stylized form for “Tires for vehicle wheels; pneumatic tires; airplane tires; inner tubes for pneumatic tires; inner tubes for bicycles and cycles; casings for pneumatic tires; treads for retreading tires; adhesive rubber patches for repairing inner tubes; inner tube repair kits featuring rubber patches, rubber cement and adhesive tire sealant patches.”
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).
In the present case, applicant’s and registrant’s marks are nearly identical. Both marks include the wording ECOVISION. Although the registered mark appears in stylized form while the applied-for mark appears in standard characters, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in standard characters generally will not avoid likelihood of confusion with a mark in stylized characters because the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Relatedness of the Goods
The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
The applicant’s goods are “Bicycle components and accessories, namely, hubs, internal gear hubs, bicycle hubs which contains a dynamo inside, hub quick release levers, hub quick release devices, gear release levers, gear shift levers, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, pulleys for use with bicycles, chains for bicycles, shift cables, cranks, crank sets, front chain wheels, pedals, brake levers, front brakes, rear brakes, brake cables, brake shoes, brake rotors, brake pads, rims, wheels, spokes, spoke clips, bottom brackets, seat pillars, seat pillar quick release, head parts for frame-fork assembly, suspensions, handlebars, handlebar stems, grips for handlebars, bar ends, seat posts, saddles, derailleurs controlled by computer, gear position indicators for bicycles; structural parts for bicycles” and the registrant’s goods are “Tires for vehicle wheels; pneumatic tires; airplane tires; inner tubes for pneumatic tires; inner tubes for bicycles and cycles; casings for pneumatic tires; treads for retreading tires; adhesive rubber patches for repairing inner tubes; inner tube repair kits featuring rubber patches, rubber cement and adhesive tire sealant patches.”
The applicant’s and registrant’s goods are related because the goods of both parties include bicycle parts.
The applicant’s and registrant’s goods are related because the goods often originate from a single source. 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 are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); 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).
See U.S. Registration Nos. 4448779, 4441258, 4426121, 4417039, 4419414, 4411826, 4053876, 3532519, 4309327, 4088251 and 3890665.
Applicant must respond to the requirement(s) set forth below.
The following is an amended version of applicant’s identification of goods that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.
Applicant may adopt the following identification of goods, if accurate:
CLASS 12: Bicycle components and accessories, namely, wheel hubs, internal gear wheel hubs, bicycle wheel hubs which contains a dynamo inside, wheel hub quick release levers, wheel hub quick release devices, namely, wheel hub quick release levers, gear release levers for wheels, gear shift levers for wheels, front derailleurs, rear derailleurs, chain guides, freewheels, sprockets, pulleys for use with bicycles, chains for bicycles, shift cables, cranks, crank sets, front chain wheels, pedals, brake levers, front brakes, rear brakes, brake cables, brake shoes, brake rotors, brake pads, wheel rims, wheels, spokes, spoke clips, bottom brackets, seat pillars, seat pillar quick release, head parts for frame-fork assembly, suspensions, handlebars, handlebar stems, grips for handlebars, handle bar ends, seat posts, saddles, derailleurs controlled by computer, gear position indicators for bicycles; structural parts for bicycles
An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods 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 services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
CONTACT INFORMATION
/Christine Martin/
Examining Attorney
Law Office 104
(571) 272-1630
christine.martin@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.