To: | Amax, Inc. (tmdocket@hinckleyallen.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86598081 - EXALT - N/A |
Sent: | 7/27/2015 7:06:05 PM |
Sent As: | ECOM113@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86598081
MARK: EXALT
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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: Amax, 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: 7/27/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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
Applicant’s mark is EXALT for “LED (light emitting diodes) desk lamps” in Class 11.
The registered mark EXALTATION for “Electronic controls for lighting; cables for lighting devices; optical components for lighting devices, in particular lenses, prisms, optical fibres, filters, Mirrors, reflectors, light diffusers in the nature of electric/electronic and optical components for lighting devices” in Class 9 and “Lighting apparatus and devices, namely, lights for offices, warehouses, shop-windows, furniture, cruise ships and marinas, and lights for illuminating displays, lights for industrial buildings, namely, for high bay warehouses, production and packing areas, lights for residential areas, namely, for living rooms, gardens, lounges, kitchens, bed rooms and TV-rooms, lights for urban areas, namely, for streets, parking lots, parks, buildings and fountains, lights for promotion purposes, namely, lights for illuminating video walls and displays, spots and wash lights; electric lamps; sockets for electric lights” in Class 11.
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. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the applied-for mark is EXALT and the registered mark is EXALTATION.
These marks are similar.
First, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Here, the applicant’s mark is identical to the first five letters of the registered mark. Therefore, consumers are likely to focus on this shared wording. Moreover, EXALT and the beginning of EXALTATION are pronounced similarly, so this first part is also similar in sound. See http://www.merriam-webster.com/dictionary/exalt (setting forth the pronunciation of EXALT as “ig-ˈzȯlt”); http://www.merriam-webster.com/dictionary/exaltation (setting forth the pronunciation of EXALTATION as “ˌeg-ˌzȯl-ˈtā-shən”). Therefore, the marks begin with wording that is highly similar in sound and appearance.
Moreover, the marks are similar in sound and meaning. EXALT means “to raise (someone or something) to a higher level” or “to praise (someone or something) highly”. See http://www.merriam-webster.com/dictionary/exalt. EXALTATION means “the act of raising someone or something in importance : the act of exalting someone or something or the state of being exalted”. See http://www.merriam-webster.com/dictionary/exaltation. Therefore EXALTATION appears to be the noun form for the verb EXALT. Therefore, these words are similar in meaning.
Therefore, because EXALT and EXALTATION begin with the same lettering, are likely to be pronounced similarly, and are similar in meaning, consumers are likely to perceive the applied-for mark as a shortened form of the registered mark. Consequently, the marks are confusingly similar.
Relatedness of the Goods
The respective goods 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] 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).
Here, applicant’s goods are “LED (light emitting diodes) desk lamps” in Class 11.
The registrant’s goods are “Electronic controls for lighting; cables for lighting devices; optical components for lighting devices, in particular lenses, prisms, optical fibres, filters, Mirrors, reflectors, light diffusers in the nature of electric/electronic and optical components for lighting devices” in Class 9 and “Lighting apparatus and devices, namely, lights for offices, warehouses, shop-windows, furniture, cruise ships and marinas, and lights for illuminating displays, lights for industrial buildings, namely, for high bay warehouses, production and packing areas, lights for residential areas, namely, for living rooms, gardens, lounges, kitchens, bed rooms and TV-rooms, lights for urban areas, namely, for streets, parking lots, parks, buildings and fountains, lights for promotion purposes, namely, lights for illuminating video walls and displays, spots and wash lights; electric lamps; sockets for electric lights” in Class 11.
Absent restrictions in an application or registration, the identified goods 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, 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 all normal channels of trade, and are available to the same class of purchasers.
Further, the registration includes the broader wording “lights for offices” and “electric lamps”. “Lights” are defined as “A source of illumination, especially an electric lamp”. See http://www.oxforddictionaries.com/us/definition/american_english/light. Therefore, the registrant’s “lights for offices” and “electric lamps” encompass the applicant’s desk lamps.
Moreover, desk lamps and lighting fixtures and lighting accessories are commonly sold in the same specialty stores and originate from the same sources. See http://www.artcraftlighting.com/web/index.php/search?category=30&action=category&category_01=Submit; http://www.artcraftlighting.com/web/index.php/products/category/table-lamps/25; http://www.artcraftlighting.com/web/index.php/products/category/bathroom-vanities/27 (company selling desk lamps and lighting fixtures under the same mark); http://www.axolightusa.com/usa/en_GB/products/u5107007 (company selling LED desk lamps and lighting fixtures under the same mark); http://www.lumisource.com/details/Emu-Lamp; http://www.lumisource.com/category/Lighting (company selling table lamps and lighting fixtures under the same mark).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Because the marks are confusingly similar and the goods are highly related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal – Likelihood of Confusion
For this application to proceed toward registration, applicant must explicitly address each refusal raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Alison R. Keeley/
Examining Attorney
Law Office 113
(571) 272-4514
Alison.Keeley@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.