To: | Exact Machinery Co., Ltd. (pengpt@yahoo.com.tw) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87542976 - EXACT - N/A |
Sent: | 5/17/2018 5:48:52 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87542976
MARK: EXACT
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Exact Machinery Co., Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 5/17/2018
Introduction
This letter responds to applicant’s communication filed on April 26, 2018, (the “Response”) in which Applicant did the following:
(1) presented arguments against the citation of prior pending application Serial No. 87307820. This application is abandoned; therefore, any refusal is obviated.
(2) presented arguments against the refusal based on a likelihood of confusion with the marks in U.S. Registration Nos. 4187645 and 4238115. Applicant’s arguments have been considered but not found persuasive.
No. (1) is acceptable.
No. (2) is not acceptable.
Based on his own further review, the examining attorney withdraws the specimen refusal.
Applicant opted to present no arguments against the citation of prior pending application Serial No. 79144859. By consequence, the application is suspended, pending a final determination as to this cited prior pending application.
Summary
1. Suspension
2. Likelihood of Confusion Refusal Continued and Maintained
3. Advisory: No Response Needed At This Time
Suspension
The trademark examining attorney is suspending action on the application for the reasons stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No. 79144859
REFUSAL CONTINUED AND MAINTAINED: The following refusal is continued and maintained:
Refusal Continued and Maintained: Likelihood of Confusion—Section 2(d)
As stated in the prior Office action, registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4187645 and 4238115. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registrations attached to the prior Office action . This refusal is continued and maintained.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrants. See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Comparison of the Marks
Applicant’s mark is, “EXACT” with a design.
The mark in U.S. Registration No. 4187645 is, “EXACT PIPECUT” with a design.
The mark in U.S. Registration No. 4238115 is, “EXAKT” in stylized characters.
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).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. For both cited registrations, the common, dominant term is “EXACT.”
The attached excerpt from The American Heritage Dictionary defines EXACT as, “Characterized by accurate measurements or inferences with small margins of error; not approximate: an exact figure; an exact science.” Thus, all three marks have similar meaning or connotation.
U.S. Registration No. 4187645
Here, the marks of the parties share the term, “EXACT”. With respect to the mark in U.S. Registration No. 4187645, these terms are identical. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark, i.e. “EXACT” and does not add any wording that would distinguish it from that mark.
In addition, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Thus, the term, “PIPECUT” in registrant’s mark is less significant than the dominant term, “EXACT.
The marks of the parties contain design elements. When evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods 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 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)).
Therefore, the marks of the parties are similar.
U.S. Registration No. 4238115
The only difference in the marks is the misspelling of “EXACT” as “EXACT” and this does not change either the sound or commercial impression of the marks. Therefore, the marks are similar.
Comparison of the Goods
http://championcuttingtool.com/
http://www.behringersaws.com/bandsaws.html
http://www.craftsman.com/products/power-tools/bench-and-stationary-power-tools
http://www.craftsman.com/products/craftsman-variable-speed-6-grinding-center-21154
http://www.craftsman.com/products/craftsman-6-in-sander-polisher?taxon_id=6237
http://www.craftsman.com/products/craftsman-10a-angel-grinder?taxon_id=6237
http://www.craftsman.com/products/craftsman-10a-4x24-belt-sander?taxon_id=6237
http://www.craftsman.com/products/craftsman-10-table-saw-with-laser-trac-reg-21807?taxon_id=6237
http://www.craftsman.com/products/craftsman-1-2-hp-12-x-16-midi-lathe-21752?taxon_id=1662
http://www.craftsman.com/products/craftsman-12-5-in-bench-top-planer?taxon_id=1662
http://www.craftsman.com/products/craftsman-xsp-20-gallon-6-5-peak-hp-wet-dry-vac
Thus, the goods of the parties are related.
Applicant’s Arguments
Applicant first argues that the term EXACT is not the dominant element in the mark.
As given above, when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods because it is that portion of the mark that consumers use when referring to or requesting the goods. 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 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)).
Here, there is only one word in the mark: “EXACT”. Purchasers would not ask for applicant’s goods by identifying applicant’s goods, e.g. axles for machines, by calling out for the brand with the hexagon having the right side being cut, and etc. Purchasers would ask for “EXACT” lathes and related goods in applicant’s identification of goods.
Thus, the literal portion of the mark, i.e. “EXACT” is the dominant portion of the mark. Therefore, applicant’s argument fails.
Applicant has also submitted a list of registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.
Applicant next refers to the difference in the visual impressions of the marks of the parties.
Again, when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods because it is that portion of the mark that consumers use when referring to or requesting the goods. 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 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)).
Applicant then argues that the goods of the parties are so different that there is no likelihood of confusion between them.
Here, as noted above, compared goods 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
As shown by the evidence attached to the prior Office action, makers and sellers of lathes, metal working machines and grinding machines such as applicant’s and power tools for cutting and power saws, sanders, planers and vacuum cleaners such as registrants’ commonly manufacture the relevant goods and market the goods under the same mark. For example, Craftsman® makes lathes such as applicant’s and power-operated planers such as registrant’s. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.
Therefore, applicant’s argument fails.
Conclusion
The similarities between the marks, the goods of the parties and the similarity of trade channels create a likelihood of confusion. Given the analysis above, and given that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). This refusal is continued and maintained.
Advisory: No Response Needed At This Time
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Gilbert M. Swift/
Trademark Examining Attorney
Law Office 109
Tel. 1+(571) 272-9028
Gilbert.Swift@uspto.gov
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.