UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88053102
MARK: TRANSEAGLE
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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: TRANSAMERICA TIRE CO., 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: 4/2/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on March 17, 2019.
In a previous Office action dated September 18, 2018, the trademark examining attorney refused registration of the applied-for mark under Section 2(d) of the Trademark Act due to a likelihood of confusion with Registration No. 0679617. In addition, applicant was required to clarify the applicant name and entity information.
Based on applicant’s response, the trademark examining attorney notes that the requirements to clarify the applicant name and entity information have been satisfied. See TMEP §§713.02, 714.04.
For the reasons set forth below, the partial refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 0679617. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTRATION NO. 0679617 (SPECIFIC GOODS)
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 0679617. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
Applicant’s mark is TRANSEAGLE in standard character form for “Automobile tires; Bicycle tyres; Casings for pneumatic tires; Inner tubes; Pneumatic inner tubes for vehicle wheels; Pneumatic tyres; Treads for retreading tyres; Tubeless tyres for bicycles; Turn signal levers for vehicles; Tyres for vehicle wheels” in Class 12.
Registrant’s mark is EAGLE in typed form for “Tires” in Class 12.
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.
SIMILARITY OF THE MARKS
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)); TMEP §1207.01(b).
Applicant’s mark is TRANSEAGLE in standard character form whereas registrant’s mark is EAGLE in typed form.
The marks are similar because applicant’s mark shares the same wording and encompasses registrant’s mark and the marks have similar overall commercial impressions.
For these reasons, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
In this case, the registration uses broad wording to describe tires, which presumably encompasses all goods of the type described, including applicant’s more narrow automobile tires. Additionally, the attached dictionary evidence from ahdictionary.com shows the word “tyre,” as it appears in applicant’s recitation of goods, to be a British variant of the word “tire.” Thus, applicant’s “bicycle tires,” “pneumatic tyres,” “tubeless tyres for bicycles,” and “tyres for vehicle wheels” are also encompassed by registrant’s broadly worded entry for “tires.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services 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)). Thus, applicant’s and registrant’s goods and/or services are related.
The attached Internet evidence, consisting of third-party manufacturers providing tires, inner tubes, and retreading for tires, also establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
Michelin
http://www.cokertire.com/15f13-185-195r15-tr-13-michelin-tube.html
http://www.cokertire.com/tires/brands/michelin-tires/michelin-xzx.html
http://www.michelintruck.com/tires-and-retreads/retreads/
Pirelli
http://www.bikebandit.com/tires-tubes/tubes/pirelli-heavy-duty-inner-tube/p/11120
http://www.pirelli.com/tires/en-us/car-light-truck/find-your-tires/product-sheet/pzero
Bridgestone
http://www.bridgestonetire.com/catalog?type=Passenger&country=US
Dunlop
http://www.jpcycles.com/product/903-695/dunlop-mt-mu-90-16-standard-tr-4-offset-metal-stem-tube
http://www.dunlopmotorcycletires.com/tire-line/cruisemax/
Continental
http://www.wiggle.com/continental-quality-road-inner-tube-1/
http://www.continental-tires.com/car/tires/ecocontact6
http://www.continental-truck.com/truck/products/tires?tread=retread&ref=2817992
Goodyear
http://www.goodyear.com/en-US/tires/wrangler-ht
http://www.goodyeartrucktires.com/retreads/retread-results.html?v=1&p=all%20position&s=10.00-20
See the following attached third-party Registration Nos.: 5212249, 5321306, 5322022, 5390043, 5470988, 5487744, 5519197, 5585185, 5585186, 5607806, 5618186, 5620487, 5648935, 5662444, and 5709816.
Thus, upon encountering applicant’s mark TRANSEAGLE in commerce, consumers are likely to be confused as to the source of applicant’s and the cited registrant’s goods. Therefore, with the contemporaneous use of highly similar marks, consumers are likely to conclude that the goods are related and originate from the same source. As such, registration on the Principal Register must be refused under Trademark Act Section 2(d).
RESPONSE OPTIONS
Class 12: Automobile tires; Bicycle tyres; Casings for pneumatic tires; Inner tubes; Pneumatic inner tubes for vehicle wheels; Pneumatic tyres; Treads for retreading tyres; Tubeless tyres for bicycles; Tyres for vehicle wheels.
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following goods:
Class 12: Turn signal levers for vehicles.
To divide an application, file a request to divide online using the Trademark Electronic Application System (TEAS) form and include a fee of $100 for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. If dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
ASSISTANCE
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.
Daniel Donegan
/Daniel Donegan/
Trademark Examining Attorney
Law Office 104
571-270-0455
daniel.donegan@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.