United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 87676868
Mark: UNO
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Correspondence Address:
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Applicant: Uno Corporation
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Reference/Docket No. 44654.002001
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: June 11, 2020
This Office action is in response to applicant’s communication filed on May 12, 2020.
In a previous Office action(s) dated November 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 5766281. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
· VARIOCELL UNO, in standard characters, for “Machines and machine tools for material processing and production, namely, machines and machine tools for the cutting, grinding, drilling, milling and forming of materials; machines and component parts of machines, namely, cutting, chip cutting, drilling, grinding, sharpening, and surface treatment machines; metal, wood and plastic working machines; motors other than for land vehicles; tools being parts of machines, namely, metal, plastics and woodworking machine tools; motor-driven tools, namely, power tools in the nature of cutters, grinders, drills, and millers; power-operated tools, namely, electric cutters, electric grinders, electric drills, and electric millers” in Class 7 (U.S. Registration No. 5766281)
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration(s).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
1. Similarity of the Marks
Applicant’s Mark: UNO, in standard characters
Registrant’s Mark: VARIOCELL UNO, in standard 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, the marks are highly similar because the marks share the wording, UNO. The only difference between the marks is applicant’s VARIOCELL, in its mark.
Applicant contends that the wording VARIOCELL is the dominant portion of Registrant’s mark. See Response.
In this case, both marks share the similar wording, UNO – both with the same translation statement. This similarity creates a confusingly similar commercial impression because consumers are likely to believe that applicant’s mark is a condensed form of registrant’s mark or that registrant has begun offering similar goods under another iteration of its registered mark. Thus, the removal of the wording VARIOCELL does not create a distinct commercial impression that distinguishes applicant’s mark from registrant’s mark.
Applicant’s contention is unpersuasive.
Therefore, the marks are confusingly similar.
Applicant contends that the “Principal[sic] Register is replete with registrations that include the word ?uno? and all of its foreign and numerical equivalents. ?1? and its equivalents are an exceedingly common laudatory designation. The unparalleled ubiquity of ?1? as a device used in marks is a fact that speaks for itself and of which consumers are well aware.” See Response. Applicant appears to contend that the wording UNO is weak or diluted. It should be noted that the common wording between the two marks is UNO and not the foreign and numerical equivalents.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. [emphasis added] See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. [emphasis added] Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
Further, evidence comprising third-party registrations for similar marks with different or unrelated goods has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).
Since applicant has submitted no evidence, no weight is given in determining the strength of the mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).
Thus, the mere statement by the applicant is insufficient to establish that the wording UNO is weak or diluted.
Applicant’s contention is unpersuasive.
2. Relatedness of the Goods
Applicant’s Goods:
· Class 7: Power drill bits; power saw blades; power tools, namely, reamers; Power operated chamfer mills; Power tools, namely, end mills
Registrant’s Goods:
· Class 7: Machines and machine tools for material processing and production, namely, machines and machine tools for the cutting, grinding, drilling, milling and forming of materials; machines and component parts of machines, namely, cutting, chip cutting, drilling, grinding, sharpening, and surface treatment machines; metal, wood and plastic working machines; motors other than for land vehicles; tools being parts of machines, namely, metal, plastics and woodworking machine tools; motor-driven tools, namely, power tools in the nature of cutters, grinders, drills, and millers; power-operated tools, namely, electric cutters, electric grinders, electric drills, and electric millers
The registration(s) use(s) broad wording to describe “Machines and machine tools for material processing and production, namely, machines and machine tools for the cutting, grinding, drilling, milling and forming of materials; machines and component parts of machines, namely, cutting, chip cutting, drilling, grinding, sharpening, and surface treatment machines; . . . motor-driven tools, namely, power tools in the nature of cutters, grinders, drills, and millers; power-operated tools, namely, electric cutters, electric grinders, electric drills, and electric millers”, which presumably encompasses all goods of the type described, including applicant’s more narrow identification, specifying the type as “power tools, namely, reamers” and “Power operated chamfer mills; Power tools, namely, end mills”. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on 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)).
Therefore, applicant’s goods and registrant’s goods are considered related for likelihood of confusion purposes.
The goods are compared to determine whether they are similar, 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, 1207.01(a)(vi).
The attached Internet evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Please see the following attached Internet evidence establishing that applicant’s goods and registrant(s)’ goods are highly related and commonly emanates from a single source and markets the goods under the same mark:
· http://www.craftsman.com/products/power-tools (offering electric drills, grinders, power drill bits, power saw blades)
· http://www.makitatools.com/ (offering metal, wood and plastic working machines, electric drills, grinders, power drill bits, power saw blades)
· http://www.worx.com/power-tools.html (offering electric drills, grinders, power drill bits, power saw blades)
· http://www.skil.com/ (offering electric drills, grinders, power drill bits, power saw blades)
· http://www.blackanddecker.com/products/power-tools (offering electric drills, grinders, power drill bits, power saw blades)
· http://www.ridgid.com/ (offering machines and machine tools for material processing and production, namely, machines and machine tools for the cutting, grinding, drilling, milling and forming of materials; machines and component parts of machines, namely, cutting, chip cutting, drilling, grinding, sharpening, and surface treatment machines, electric drills, and power saw blades)
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See id.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely "power drill bits", "power saw blades", "reamers", "chamfer mills", or "end mills" and "electric cutters”, "electric grinders", "electric drills", or "electric millers", are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
The marks create the same commercial impression and the attached evidence illustrates that the goods are commercially related and are likely to be encountered together in the marketplace by consumers. Accordingly, consumers are likely to be confused and mistakenly believe that the products originate from a common source. Therefore, registration must be refused. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Philip Liu/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 109
(571) 272 - 6792
Philip.Liu@uspto.gov
RESPONSE GUIDANCE