United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 87080897
Mark: TESLA
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Correspondence Address: |
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Applicant: TESLA, INC.
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Reference/Docket No. 038824
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: February 04, 2020
Upon remand from the Trademark Trial and Appeal Board, the trademark examining attorney reviewed applicant’s request for reconsideration and issued a Suspension Notice on November 20, 2017 based on a prior-filed application and maintaining all the issues in a previous final Office action. The prior-filed application noted in the November 20, 2017 Suspension Notice has abandoned and is no longer a potential bar to the registration of applicant’s mark.
Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated April 27, 2017 are maintained and continued:
• Section 2(d) Refusal—Likelihood of Confusion
See TMEP §§715.03(a)(ii)(B), 715.04(a).
In its Request for Reconsideration, applicant contends that its prior registration, Registration No. 4554429, obviates the Section 2(d) refusal. See Request at 1-2. However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration is not for identical or identical in part services. Thus applicant’s prior registration does not obviate the Section 2(d) refusal.
Applicant also appears to argue that there is no likelihood of confusion because of applicant’s history within the field of renewable energy. See Request at 2. Applicant contends that since it has provided batteries and provided consumers the option to purchase solar-related equipment for their vehicles that “consumers would understand the applied-for mark and services to emanate from Applicant, Tesla, Inc., not Registrant.” See Request at 2-4. Applicant has not provided any support for this statement. Further, even if this were the case, the Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s services, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods and/or services such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994). Therefore, this argument is not persuasive.
Applicant also claims that there has not been any actual confusion between its applied-for mark and registrant’s mark and thus the likelihood of confusion should not be maintained. See Request at 2. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). Therefore, this argument is not persuasive.
Applicant also appears to argue that its prior use of the mark in association with solar-related equipment and co-marketing with third parties obviates the Section 2(d) refusal. See Request at 3-5. Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv). Therefore, applicant’s claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).
Applicant also contends that “Registrant simply does not have the same long-term association with solar energy systems that Applicant does, nor does it have any registrations for equipment related to solar or renewable energy systems or products.” See Request at 5. Whether registrant actually offers the same services as the applicant offers is irrelevant. The issue is whether the evidence supports the conclusion that consumers are likely to believe that companies like registrant do or would offer the same services as those that applicant identified.
Here, the examining attorney has provided ample evidence that consumers commonly encounter companies that offer electrical contracting and electrical contractor services and also provide installation, maintenance, and repair of solar panels and solar equipment and consultation related thereto under the same mark. See Fitzgerald Electrical Services, Sbrega Electric, Exceptional Electric, E² Enlightening Electric, Bell Solar & Electrical Systems, and Energized Electric LLC, all attached; see also Ally (attached to the April 27, 2017 Office action at 2-5), CSI Electrical Contractors, Inc. (attached to the April 27, 2017 Office action at 6-8), Inter Faith Electric & Solar (attached to the April 27, 2017 Office action at 9-13), Milholland (attached to the April 27, 2017 Office action at 14-25), Rack Lighting & Electric (attached to the April 27, 2017 Office action at 26-27), Sustineo (attached to the October 5, 2016 Office action at 7-15), Electricraft Inc. (attached to October 5, 2016 Office action at 16-21), Mayessco (attached to the October 5, 2016 Office action at 22-23), AWE (attached to the October 5, 2016 Office action at 24-42), and Edge Energy (attached to the October 5, 2016 Office action at 43-67). Therefore, applicant’s and registrant’s services are considered closely related for likelihood of confusion purposes and applicant’s arguments are not persuasive.
Applicant’s and registrant’s marks are confusingly similar. Further, the services of applicant and registrant are considered closely related. Therefore, registration of the applied-for mark continues to be refused under Trademark Act Section 2(d).
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
/Danythe Johnson/
Trademark Examining Attorney
Law Office 120
Phone: 571-272-4391
Email: danythe.johnson@uspto.gov
