To: | Himax Technologies, Inc. (mailroom@bskb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86385730 - HIMAX - 4448-0323US1 |
Sent: | 7/9/2015 5:19:18 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86385730
MARK: HIMAX
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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: Himax Technologies, 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: 7/9/2015
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:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register HIMAX (plus design) for, in relevant part, “Electronic controls for motors” and “Design of and computer programming and computer system analysis for motor controllers.” The registered mark is HIMAX (standard characters) for “Safe against intrinsic errors and non-safety-related memory-programmable and hard-wired wiring-programmable electronic systems in the nature of an electronic controller for the safe operation of machines; safe against intrinsic errors and non-safety-related memory-programmable and hard-wired wiring-programmable electronic systems in the nature of electronic controllers for the control and closed-loop control of automation processes.”
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); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Here, the applied-for mark is HIMAX (plus design) and the registered mark is HIMAX (standard characters).
In the applied-for mark, the wording is more dominant than the design element because the word “HIMAX” is used when requesting applicant’s goods and services. This wording is identical to the entirety of the registered mark, HIMAX, and is therefore similar in terms of sound, commercial impression, and connotation. Accordingly, the marks are confusingly similar.
Relatedness of the Goods and Services
Applicant’s Goods and Registrant’s Goods
In this case, applicant’s relevant goods are “Electronic controls for motors” and registrant’s goods are “Safe against intrinsic errors and non-safety-related memory-programmable and hard-wired wiring-programmable electronic systems in the nature of an electronic controller for the safe operation of machines; safe against intrinsic errors and non-safety-related memory-programmable and hard-wired wiring-programmable electronic systems in the nature of electronic controllers for the control and closed-loop control of automation processes.”
The identifications set forth in the application and registration have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods “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)). Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Specifically, applicant’s electronic controls for motors would include registrant’s more specific type of electronic controllers for the safe operation of machines.
Applicant’s Services and Registrant’s Goods
Applicant’s relevant services are “Design of and computer programming and computer system analysis for motor controllers” and registrant’s goods are “Safe against intrinsic errors and non-safety-related memory-programmable and hard-wired wiring-programmable electronic systems in the nature of an electronic controller for the safe operation of machines; safe against intrinsic errors and non-safety-related memory-programmable and hard-wired wiring-programmable electronic systems in the nature of electronic controllers for the control and closed-loop control of automation processes.”
Here, applicant’s services of designing, computer programming, and computer system analysis of motor controllers is presumed to feature all types of motor controllers, including those identified in the registration. Therefore, applicant’s services and registrant’s goods are related.
Accordingly, applicant’s applied-for mark is refused under Section 2(d) of the Trademark Act as use of the marks HIMAX (plus design) and HIMAX (standard characters) by different parties with the identified goods and services is likely to lead to consumer confusion or mistake as to the source of the goods and services.
PARTIAL REFUSAL—RESPONSE OPTIONS
(1) Deleting the goods and services to which the refusal pertains;
(2) Filing a request to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services 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 for the goods and services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Classes 9 and 42 will be deleted from the application: Electronic controls for motors; Design of and computer programming and computer system analysis for motor controllers. The application will then proceed with the following goods and services in International Classes 9 and 42 only:
Class 9: stylus pen, namely, the stylus pen used for computers, mobile devices, and tablets; touchscreen controllers; optical lenses; micro-electro-mechanical systems, namely, multimedia projectors and their parts; Photoelectric sensors; cameras; power management integrated circuits; LED driver integrated circuits; LED lighting equipment, namely, LED light controls, LED circuit boards and LED light control chips
Class 42: Design of and computer programming and computer system analysis for touch pens, touch controllers, optical lenses, micro-electro-mechanical systems, photoelectric sensors, cameras, power management integrated circuits, LED driver integrated circuits, and LED lighting equipment
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
/Danielle Johnson/
Law Office 117
571-272-8174
danielle.johnson@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.