To: | Altec, Inc. (mwr@richardsonclement.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87161524 - EXP - ALTEC-000001 |
Sent: | 12/16/2016 12:32:46 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87161524
MARK: EXP
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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: Altec, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/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: 12/16/2016
ISSUES APPLICANT MUST ADDRESS: On December 14, 2016, the trademark examining attorney and David E. Malick 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.
SUMMARY OF ISSUES:
TRADEMARK ACTION 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. 4521183. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the 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). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Comparison of Marks
Applicant seeks to register EXP (stylized), while the registrant owns and uses the mark EXP EQUIPXP (with design).
In a likelihood of confusion determination, 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 White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In the instant application, applicant’s mark and the mark of the registrant share the identical letters EXP for extremely related goods and services. Likelihood of confusion is high.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Comparison of Goods and Services
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks for coats and for retail outlets featuring camping and mountain climbing equipment, including coats, likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”); TMEP §1207.01(a)(ii).
Such is the case here. Applicant seeks to register its mark for “machines, namely, mobile hydraulic equipment, and truck mounted insulated and non-insulated aerial device, namely, elevating work platforms for lifting people and equipment to work positions; motors, namely, combustion engine motors and engines, except for land vehicles; agricultural implements other than hand-operated, namely, incorporators; lifts, elevator lifts, aerial lifts; cranes, pedestal and vehicle mounted cranes; aerial work platforms elevating work platforms; load carrying apparatus and equipment, namely, mobile hydraulic equipment, namely, insulating and non-insulating aerial devices for personnel and material handling, namely, truck mounted insulated and non-insulated aerial devices elevating work platforms, digger derricks, and cranes for lifting people and equipment to work positions; cable reel lifters, cable handlers, aerial cable placers, namely, aerial cable cranes, jibs, winches, jacks, namely, hydraulic jacks; derricks, digger derricks; diggers, namely, earth moving machines, namely, excavators, pressure diggers; hydraulic leveling system composed of hydraulic hoses, a rotary valve, metal links and a metal housing that securely maintains the upright position of personnel platforms mounted on utility vehicle aerial lifts used in the construction, telecommunications and utility industries” in Class 007 and “Trucks and structural parts therefor, namely, mobile hydraulic equipment for utility industries that is installed on, and work with, a hybrid-electric drive-train chassis for tire or truck mounted service trucks and special duty trucks, all used in the construction, communications, tree and utility industries, with the following components being sold together as components of the trucks in the nature of aerial buckets, namely, buckets attached at the end of a boom assembly which is extendible, articulating, designed and used to position and support personnel at high altitudes, derricks, winches, hydraulic earth augers, pressure diggers, which are the mechanisms that drive the augers; trailer mounted jacks, namely, vertical hydraulic jacks attached to the frame of a service truck, designed to stabilize the vehicles and or relieve pressure from the vehicle's tires; cargo trailers used to transport poles; trailers with hotline insulator washers attached thereto; service truck body with storage bins, utility bin metal latches, and pedestal mounted stand-alone cranes, all attached components sold as a unit with the truck bodies; trucks to transport cables; aerial cable placers, namely, trucks for use in erecting overhead communication cable” in Class 012, while the registrant uses its mark on “Online wholesale store services featuring heavy equipment” in Class 035.
Applicant’s website states “Altec is a leading provider of products and services to the electric utility, telecommunications, tree care, lights and signs, and contractor markets. We deliver products and services in more than 100 countries throughout the world. Altec Inc. is the holding company for Altec Industries, Global Rental, Altec NUECO, Altec Worldwide, Altec Capital, Altec Supply, and Altec Ventures, LLC.”
See http://www.altec.com/about-altec/.
Similarly, the registrant specializes in the sale of new and used heavy equipment, such as:
· Dredgers
· Cranes
· Marine
See http://equipxp.com/about/. The tab “SOLUTIONS” lists the above equipment.
The goods and services are complementary and highly related in that applicant’s equipment and trucks could be sold through the registrant’s wholesale store services featuring identical, overlapping and related goods used in similar industries.
In sum, since the marks are highly similar and the goods and services related and complementary, there is a substantial likelihood that purchasers would be confused as to the source of the goods and services.
As such, the mark is refused under Section 2(d) of the Trademark Act.
OPPORTUNITY TO RESPOND
APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.
DESCRIPTION OF THE MARK
The following description of the mark is added to the record:
The mark consists of the stylized letters EXP.
See 37 C.F.R. §2.37; TMEP §§808 et seq.
SIGNIFICANCE OF LETTERS IN THE MARK
The following statement is added to the record:
The letters “EXP” have no meaning other than trademark significance. Applicant coined the acronym “EXP” to stand for “efficiency times power”, which is a term of art used in applicant’s industry.
See 37 C.F.R. §2.61(b); TMEP §808.01(a).
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 or e-mail without incurring this additional fee.
/Tricia Sonneborn/
Tricia Sonneborn
Trademark Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
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.