To: | Automatic Technology (Australia) Pty Ltd (mtrudell@sheridanross.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88002980 - SHED MASTER - 2262ATA-13 |
Sent: | 8/22/2018 4:52:03 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88002980
MARK: SHED MASTER
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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: Automatic Technology (Australia) Pty Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 8/22/2018
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) LIKELIHOOD OF CONFUSION REFUSALS
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4198938, 3984092, and 1401035. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied-for mark is SHED MASTER for a variety of goods for opening, closing, locking, securing, managing, and operating garage doors, gates, shutters, and grilles as well as a variety of electric locks. The registered marks are two instances of MASTER (both owned by Master Lock Company) for electric lock, locksets, and keypads (Reg. No. 3984092) and for electronic combination locks and electronic padlocks (Reg. No. 4198938) and one instance of GARAGE MASTER (“garage” disclaimed) for electronic garage door openers.
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 and/or services of the applicant and registrant(s). 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.
The marks are similar in appearance, connotation, and commercial impression
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 instance, disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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).
Upon review, the applied-for mark is similar to the registered mark(s) because the applied-for mark shares the wording MASTER with each registered mark. The word MASTER is the entirety of the two registered marks owned by Master Lock. The word MASTER is the dominant element of GARAGE MASTER as the word GARAGE is disclaimed and describes the use of the goods. Similarly, the word MASTER is the dominant element of the applied-for mark as SHED is required to be disclaimed below as descriptive of a use of the goods. A consumer is likely to see SHED MASTER as a variant of the MASTER line of locks for sheds and similarly see the GARAGE MASTER and SHED MASTER as describing the usage of the door openers under a larger MASTER group.
Accordingly, the applied-for mark and the registered mark(s) are similar under Section 2(d) for refusal purposes.
Comparison of the Goods
Here, the goods of the applied-for mark and registered marks are in part identical and in part encompassing. The applied-for mark shares electronic locks and electronic combination locks with the two registered MASTER locks. Further, the applied-for mark shares garage door openers with GARAGE MASTER. Further, the application uses broad wording to describe various locks and openers, which presumably encompasses all goods and/or services of the type described, including registrants’s electronic locks and electronic garage door openers. 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)).
As the goods of the applicant and registrants are in part identical and encompassing, the entire class is refused. Generally, if likelihood of confusion is found as to one good in an International Class, then the entire Class fails. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) (it is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004).
Accordingly, the goods are found closely related.
Conclusion
Given the similarity between the marks as well as the relatedness of the goods, the applied-for mark is refused registration under Section 2(d).
The identification of goods is indefinite and must be clarified because many identifications lack the specificity required, it identifies goods that appear to be in other classes, it needs to incorporate the parentheticals, and identifications are otherwise unacceptable as explained below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Suggested Amendments
Suggested amendments appear below in bold, explanatory information appears in brackets and should is not part of the identification, and matter to be deleted, if any, is struck through. Please note that these suggestions are illustrative and not exhaustive. Applicant should refer to the Identification Manual referenced below for further guidance and suggestions of acceptable identifications.
Applicant may adopt the following identification, if accurate:
Class 007: Electronically operated units and instrument, namely, {specific the “units” and “instruments,” e.g., electric door opening systems} to open, lift, lower, close, lock, secure, manage, maintain and operate doors, garage doors, gates, shutters, and grilles installed on commercial, industrial and residential buildings; automated {indicate mechanism, e.g., electric, hydraulic} garage door and gate openers; {indicate mechanism, e.g., pneumatic, electric} garage door openers; remote controlled apparatus {indicate nature of “apparatus” which will determine classification, e.g., “electric openers” in Class 007} for use with garage doors
Class 009: Electronically operated units and instruments all of the foregoing being those to open, lift, lower, close,
lock, secure, manage, maintain or operate doors, garage doors, gates, shutters, grilles, and including on commercial, industrial and residential buildings {suggestion in Class
007}; computers, computer hardware, and portable computers; {inserted semi-colon} downloadable software applications (apps),
computer software, and computer firmware for {indicate function of software/firmware, e.g., “operating and monitoring automatic garage door and gate
openers}; automated garage door and gate openers{suggestions in Class 007}; automated control systems comprised of {indicate principal
parts noting that these parts control classification, e.g., computer hardware and timers for automatically locking doors}; ultrasonic sensing equipment, namely, {indicate type of
“equipment” and amend “including” to “namely”} ultrasonic sensors and ultrasonic parking sensors; garage door openers {suggestions in
Class 007}; remote controls for {indicate what is controlled, e.g., automatic garage doors}; remote control devices, other than toys, namely, {indicate
common commercial name for “devices,” e.g., remote controls} including those to open, lift, lower, close, lock, secure, manage, maintain and operate doors, garage doors, gates, shutters, and grilles installed on commercial, industrial and residential buildings; security control
devices namely, {indicate common commercial name, e.g., wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical
devices and systems}; apparatus and instruments being those used to view, open, close or operate doors, garage doors, windows remotely, namely, {indicate common commercial name,
e.g., computer hardware and software systems for remotely operating doors and windows}; remote entry control apparatus, namely, {indicate common commercial name, e.g., touch pads
for secure entry} for buildings, garages, homes; remote entry point control apparatus, namely, {indicate common commercial name, e.g., electronic locks with remote lock and
unlock capability}; card operated electronic locks; digitally controlled locks; electric combination locks; electric door and garage locks; electric locks; electric striking plates for locks;
electrical locks; electromagnetic locks; electronic door and garage door locks; electronic locks; encoded key cards for opening electronic locks; electric
locks (electric) with alarms; locks (electronic); locks, electric {delete as these are duplicates of prior entries for electronic locks
and electric locks}; electric mechanical combination locks (electric); electric mechanical dialing {spelling
correction} locks (electric); metal, electric mechanical locks (electric, metal); electric, non-metallic
mechanical locks (electric, non-metallic);electric, non-metallic mechanical locks (electric, non-metallic) for use in motor vehicles;
electric metal locks (electric); remote controls for operating door and garage door locks; remotely controlled electric alarm locks;
remotely controlled electric door locks; electric vehicle locks (electric); remote controlled apparatus {indicate
nature of “apparatus” which will determine classification, e.g., “electric locks” in Class 009} for use with garage doors; parts and accessories for use with the foregoing, namely, {indicate parts and accessories with specificity, e.g., biometric scanners, electric control panels}
Advisory
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
The attached evidence from Oxford Dictionary shows this wording means a type of structure used as a storage space or workshop. The identification repeatedly refers to usage with various buildings. Therefore, the wording merely describes a type of building with which the goods are intended to be used.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
Applicant should submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “SHED” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
INFORMATION REGARDING COMMUNICATIONS WITH TRADEMARK OFFICE
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.
Mark Shiner
/Mark Shiner/
Trademark Examining Attorney
Law Office 105
Phone: 571-272-1489
E-mail: mark.shiner@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.