UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 1/25/2017

 

 

 

 

 

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 $125 per 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.  

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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- Likelihood of Confusion
• Significance of the Letters

 

 

SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION

 

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1512433, 3037037, 3754886, 4145181 and 4145183.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations which are summarized below.

 

 

U.S. Registration No. 1512433 for the mark XP for electrical signal transmitting cables

 

 

U.S. Registration No. 3037037 for the mark XP and design for battery chargers; switch mode battery packs; [ fans for electric power supplies; ] ac line filters; dc line filters; electrical filters; mains adapters for the conversion of ac current to dc current; [ mains filters; ] electrical power supplies; [ ac/ac power supplies; ] ac/dc linear power supplies; ac/dc switched mode power supplies; dc/dc power supplies; military dc/dc converters, namely, dc/dc converters for use in military, aerospace and space applications; military ac/dc converters, namely, ac/dc converters for use by the military; [ military ac/ac converters, namely, ac/ac converters for use in military, aerospace, and space applications; ]emergency electrical power supplies; [ dc/ac inverters; ] ac/dc inverters; electrical and electronic switchers; [ electrical transformers; uninterruptible power supplies; ] [ electrical detectors, namely, electrical detectors for power supplies ]

 

 

U.S. Registration No. 3754886 for the mark XP for machine and machine tools, namely, cutting machines; handheld saws as integral component parts of cutting machines; power operated saws; chain saws, power operated saws, namely, pole saws and clearing saws; hedge and tree trimming machines, power operated hedge trimmers, power cutters, power operated brush cutters; saw blades as integral component parts of cutting machines; lawn mowing machines, ride-on lawn mowers, garden tractors, aerators, power operated dethatchers, power operated cultivators, power operated blowing and sucking devices, namely, leaf and snow blowers, and garden vacuums machines; accessories for the aforementioned goods, namely, machine tool holders, cases specially adapted for the aforementioned goods; harnesses; replacement parts for the aforementioned goods

 

 

U.S. Registration No. 4145181 for the mark XP XTREME POWER for large scale electrical power storage and management systems comprised of one or more bi-directional power inverters connected to one or more power storage cells that are controlled by a customizable automated control system, for industrial and commercial usage.

 

 

U.S. Registration No. 4145183 for the mark XP for large scale electrical power storage and management systems comprised of one or more bi-directional power inverters connected to one or more power storage cells that are controlled by a customizable automated control system, for industrial and commercial usage.

 

 

Applicant’s mark is XP for machines for the assembly and packaging of electronic chips; machines for manufacturing semiconductors, and structural parts and fittings therefor; semiconductor manufacturing machines; semiconductor manufacturing machines and systems composed of a vacuum chamber for accommodating semiconductor wafers and structural parts and machines for handling and transferring semiconductor wafers into and out of vacuum chamber, and structural parts and fittings therefor; machines for the treatment of semiconductor wafers, namely, semi-conductor wafer processing equipment, and structural parts and fittings therefor; industrial chemical reactors; industrial robots; Electrical reactors for processing semiconductor wafers; reactors for processing semiconductor wafers, namely, chemical reactors for the thermal treatment of semiconductor wafers and reactors for chemical vapor deposition; laboratory chemical reactors; robots being electronic control devices, namely, laboratory robots; electronic controllers for the semiconductor industry; electronic control systems for machines; structural parts and fittings for the aforementioned goods.

 

 

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 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

 

 

U.S. Registration Nos. 1512433, 3754886, and 4145183- In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  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). 

 

In the present case, applicant’s mark is XP and registrant’s mark is XP.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  In re i.am.symbolic, llc, 116 USPQ2d at 1411.

 

Therefore, the marks are confusingly similar. 

 

 

U.S. Registration No. 3037037- Both marks begin with the identical lettering “XP”. Although the registered mark also has a design element, marks must be compared in their entireties, the word portion generally may be considered the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording.  See 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).  For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar.  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)).

 

 

U.S. Registration No. 4145181- Both marks begin with the identical lettering “XP”. Although applicant has merely deleted the additional wording “XTREME POWER” from its mark, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.

 

 

Similarity of the Goods

 

 

Applicant’s goods are machines for the assembly and packaging of electronic chips; machines for manufacturing semiconductors, and structural parts and fittings therefor; semiconductor manufacturing machines; semiconductor manufacturing machines and systems composed of a vacuum chamber for accommodating semiconductor wafers and structural parts and machines for handling and transferring semiconductor wafers into and out of vacuum chamber, and structural parts and fittings therefor; machines for the treatment of semiconductor wafers, namely, semi-conductor wafer processing equipment, and structural parts and fittings therefor; industrial chemical reactors; industrial robots; Electrical reactors for processing semiconductor wafers; reactors for processing semiconductor wafers, namely, chemical reactors for the thermal treatment of semiconductor wafers and reactors for chemical vapor deposition; laboratory chemical reactors; robots being electronic control devices, namely, laboratory robots; electronic controllers for the semiconductor industry; electronic control systems for machines; structural parts and fittings for the aforementioned goods. The goods for U.S. Registration No. 1512433 are electrical signal transmitting cables.  The goods for U.S. Registration No. 3037037 are battery chargers; switch mode battery packs; [ fans for electric power supplies; ] ac line filters; dc line filters; electrical filters; mains adapters for the conversion of ac current to dc current; [ mains filters; ] electrical power supplies; [ ac/ac power supplies; ] ac/dc linear power supplies; ac/dc switched mode power supplies; dc/dc power supplies; military dc/dc converters, namely, dc/dc converters for use in military, aerospace and space applications; military ac/dc converters, namely, ac/dc converters for use by the military; [ military ac/ac converters, namely, ac/ac converters for use in military, aerospace, and space applications; ]emergency electrical power supplies; [ dc/ac inverters; ] ac/dc inverters; electrical and electronic switchers; [ electrical transformers; uninterruptible power supplies; ] [ electrical detectors, namely, electrical detectors for power supplies ].  The goods for U.S. Registration No. 3754886 are machine and machine tools, namely, cutting machines; handheld saws as integral component parts of cutting machines; power operated saws; chain saws, power operated saws, namely, pole saws and clearing saws; hedge and tree trimming machines, power operated hedge trimmers, power cutters, power operated brush cutters; saw blades as integral component parts of cutting machines; lawn mowing machines, ride-on lawn mowers, garden tractors, aerators, power operated dethatchers, power operated cultivators, power operated blowing and sucking devices, namely, leaf and snow blowers, and garden vacuums machines; accessories for the aforementioned goods, namely, machine tool holders, cases specially adapted for the aforementioned goods; harnesses; replacement parts for the aforementioned goods.  The goods for U.S. Registration Nos. 4145181 and 4145183 are large scale electrical power storage and management systems comprised of one or more bi-directional power inverters connected to one or more power storage cells that are controlled by a customizable automated control system, for industrial and commercial usage. 

 

The goods 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 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).

 

 

With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/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 identification set forth in the application and registrations has 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 application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrants’ more narrow identification.  Accordingly, applicant’s various machine, reactors and robots and structural parts and fittings therefor is written broad enough that it could encompass registrants’ goods in the nature of electrical signal transmitting cables; battery chargers; switch mode battery packs; [ fans for electric power supplies; ] ac line filters; dc line filters; electrical filters; mains adapters for the conversion of ac current to dc current; [ mains filters; ] electrical power supplies; [ ac/ac power supplies; ] ac/dc linear power supplies; ac/dc switched mode power supplies; dc/dc power supplies; military dc/dc converters, namely, dc/dc converters for use in military, aerospace and space applications; military ac/dc converters, namely, ac/dc converters for use by the military; [ military ac/ac converters, namely, ac/ac converters for use in military, aerospace, and space applications; ]emergency electrical power supplies; [ dc/ac inverters; ] ac/dc inverters; electrical and electronic switchers; [ electrical transformers; uninterruptible power supplies; ] [ electrical detectors, namely, electrical detectors for power supplies ]; machine and machine tools, namely, cutting machines; handheld saws as integral component parts of cutting machines; power operated saws; chain saws, power operated saws, namely, pole saws and clearing saws; hedge and tree trimming machines, power operated hedge trimmers, power cutters, power operated brush cutters; saw blades as integral component parts of cutting machines; lawn mowing machines, ride-on lawn mowers, garden tractors, aerators, power operated dethatchers, power operated cultivators, power operated blowing and sucking devices, namely, leaf and snow blowers, and garden vacuums machines; accessories for the aforementioned goods, namely, machine tool holders, cases specially adapted for the aforementioned goods; harnesses; replacement parts for the aforementioned goods; and large scale electrical power storage and management systems comprised of one or more bi-directional power inverters connected to one or more power storage cells that are controlled by a customizable automated control system, for industrial and commercial usage.

 

 

In total the marks are identical or similar.  The goods are related.  Therefore, consumers are likely to be confused and mistakenly believe that the goods come from a common source.  Accordingly, registration is refused under Section 2(d) of the Trademark Act.

 

 

 

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

 

 

SIGNIFICANCE OF THE LETTERS

 

 

Applicant must specify whether the letters “XP” have any significance in the applicant’s trade or industry or as applied to the goods described in the application, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Shavell McPherson-Rayburn//

Shavell McPherson-Rayburn

Examining Attorney

Law Office 105

571-272-6121

Shavell.mcpherson-rayburn@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 1/25/2017 FOR U.S. APPLICATION SERIAL NO. 87250201

 

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 1/25/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.