UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 9/7/2016

 

 

 

ISSUES APPLICANT MUST ADDRESS:  On September 2, 2016, the trademark examining attorney and Neal E. Friedman discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

 

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.

 

 

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:

 

• Section 2(d) refusal.

• Information.

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4151267.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

 

The applicant has applied to register the mark NANOCORE for fiber optic cables; cables for optical signal transmission; fiber optic cables for indoor, simultaneous indoor and outdoor, and outdoor use; data cables. 

 

 

The registered mark is NANOCORE for infrared electronics, namely, thermal imaging systems, devices and components comprised of one or more of the following - infrared cameras, thermal imaging camera cores, thermal imaging camera engines, thermal imaging camera housings, interface control units and assemblies for interfacing between cameras, processing units and displays, optical lenses and structural parts for camera heat sensors used in cameras for detecting the presence of heat, custom integrated circuits, pan and tilt positioning assemblies for cameras, digital signal processing assemblies for cameras, protective infrared windows and assemblies for cameras, infrared detectors, image processing units for processing images captured by infrared cameras and transmitting such images to displays, electronic control units for operating cameras, thermal image processing software, graphical user interface control software and software for analysis of specific applications, digital video interfacing and video recording in thermal imaging applications, video, LCD, heads-up and CRT display screens, power sources, namely, batteries, battery chargers, and interface cable assemblies and manuals therefor, sold as a unit.

 

 

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 and/or services 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, 1361, 177 USPQ 563, 567 (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/or services, and similarity of the trade channels of the goods and/or 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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

 

 

Similarity of the Marks

 

In the present case, applicant’s proposed mark NANOCORE is identical to the registered mark NANOCORE.  When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Truimph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 ( (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013));TMEP §1207.01(b).

 

In this instance, the respective marks create the same general overall commercial impression because the marks share the same sound, appearance, and connotation created by the identical wording NANOCORE.  Thus, upon encountering applicant’s proposed mark NANOCORE for fiber optic cables; cables for optical signal transmission; fiber optic cables for indoor, simultaneous indoor and outdoor, and outdoor use; data cables and registrant’s mark NANOCORE for infrared electronics, namely, thermal imaging systems, devices and components comprised of one or more of the following - infrared cameras, thermal imaging camera cores, thermal imaging camera engines, thermal imaging camera housings, interface control units and assemblies for interfacing between cameras, processing units and displays, optical lenses and structural parts for camera heat sensors used in cameras for detecting the presence of heat, custom integrated circuits, pan and tilt positioning assemblies for cameras, digital signal processing assemblies for cameras, protective infrared windows and assemblies for cameras, infrared detectors, image processing units for processing images captured by infrared cameras and transmitting such images to displays, electronic control units for operating cameras, thermal image processing software, graphical user interface control software and software for analysis of specific applications, digital video interfacing and video recording in thermal imaging applications, video, LCD, heads-up and CRT display screens, power sources, namely, batteries, battery chargers, and interface cable assemblies and manuals therefor, sold as a unit, consumers are likely to be confused and mistakenly believe that the respective closely related goods emanate from a common source.

 

 

 

Relatedness of the Goods and/or Services

 

The respective goods of the parties are closely related.  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)); TMEP §1207.01(a)(i).

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, Llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)); TMEP §1207.01(a).

 

The applicant’s fiber optic cables; cables for optical signal transmission; fiber optic cables for indoor, simultaneous indoor and outdoor, and outdoor use; data cables are closely related to the registrant’s infrared electronics, namely, thermal imaging systems, devices and components comprised of one or more of the following - infrared cameras, thermal imaging camera cores, thermal imaging camera engines, thermal imaging camera housings, interface control units and assemblies for interfacing between cameras, processing units and displays, optical lenses and structural parts for camera heat sensors used in cameras for detecting the presence of heat, custom integrated circuits, pan and tilt positioning assemblies for cameras, digital signal processing assemblies for cameras, protective infrared windows and assemblies for cameras, infrared detectors, image processing units for processing images captured by infrared cameras and transmitting such images to displays, electronic control units for operating cameras, thermal image processing software, graphical user interface control software and software for analysis of specific applications, digital video interfacing and video recording in thermal imaging applications, video, LCD, heads-up and CRT display screens, power sources, namely, batteries, battery chargers, and interface cable assemblies and manuals therefor, sold as a unit because the respective goods and/or services are marketed to the same type of customers in the same channels of trade; the identifications alone are proof of this fact.  For example, the applicant’s “data cables” are presumed to be used with the registrant’s goods and/or encompass the registrant’s “interface cable assemblies.”

 

Therefore, because the marks are identical and the goods are closely related, there is a likelihood of confusion as to the source of applicant’s goods.  Consequently, the applicant’s mark is not entitled to registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

The applicant may adopt the following identification if accurate which will obviate the refusal above:

 

Fiber optic cables for use in the telecommunications industry; cables for optical signal transmission for use in the telecommunications industry; fiber optic cables for indoor, simultaneous indoor and outdoor, and outdoor use for use in the telecommunications industry; data cables for use in the telecommunications industry in International Class 9.

 

 

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

 

INFORMATION ABOUT GOODS/SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §§814, 1402.01(e).  The information requested below is reasonably necessary to the examination of the application because it will provide a more in-depth understanding of the mark and/or issue(s) at hand. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008), In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003), TMEP §814).  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

The applicant must directly answer the following question(s) and/or provide the information requested:

 

1.  Does NANOCORE have any significance as applied to the goods and/or services other than trademark and/or service mark significance?

 

2.  Does NANOCORE have any significance in the relevant trade or industry other than trademark and/or service mark significance?

 

3.  Does the applicant manufacture or offer any of the goods and/or services that appear in the registrant’s identification of goods and/or services?

 

4.  Other than as shown in in any attached evidence, is the applicant aware of any other company(ies) and/or person(s) that provides both the goods and/or services, in whole or in part, listed in both the applicant’s identification and the registrant’s identification(s)?  If so, the applicant must provide the name of the company(ies) and/or person(s) and any available website address for the same.  The applicant need not provide more than five references per each cited registration and/or prior pending application.

 

5.  If available, the applicant will provide a website address at which the goods and/or services are offered and/or the mark is used.  If no website is available, then the applicant will state this fact for the record.

 

6.  NOTE: Providing a website address does not obviate this requirement.  To permit proper examination of the application, applicant must submit additional product information about applicant’s goods.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

 

 

QUESTIONS ABOUT THIS ACTION

 

If the applicant has technical questions about the TEAS response to Office action form, the applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail.  Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving.  You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours. 

 

 

For status inquiries or copies of documents, an applicant may check the status of or view documents filed in the trademark and/or service mark application or registration twenty-four (24) hours a day, seven (7) days a week, using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”  Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.

 

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.

 

 

If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

571.273.9209 Facsimile

Brian.Pino2@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/7/2016 FOR U.S. APPLICATION SERIAL NO. 87116243

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 9/7/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.