UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88062896
MARK: ATLAS MARINE SYSTEMS
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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: Unitron, LP
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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: 11/21/2018
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:
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark, is refused because of a likelihood of confusion with the mark, in U.S. Registration Nos. 3861509; 2372338; 2372337; 5357903; 3945522; and 5533005. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s applied for mark is ATLAS MARINE SYSTEMS in standard character. Registrants’ marks are as follows:
ATLAS POWER in standard character in Reg. no. 3861509
ATLASPOWER in typed drawing in Reg. no. 2372338
ATLASPOWER in special form in Reg. no. 2372337
ATLAS LAB in standard character in Reg. no. 5357903
THE ATLAS GROUP in standard character in Reg. no. 3945522
ATLAS SURVEYING, INC. in special form in Reg. no. 5533005
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods/services, and similarity of the trade channels of the goods/services. 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
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).
In the present case, applicant’s applied-for mark, ATLAS MARINE SYSTEMS is confusingly similar to the cited registered marks because the initial, distinct wording ATLAS is identical in sound, meaning, and essentially in appearance. 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). Matter that is descriptive of or generic for a party’s goods/services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Here, the attached evidence shows that the wording MARINE SYSTMES in the applied-for mark is merely descriptive of a characteristic/feature/purpose of applicant's goods/services. This wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording ATLAS the more dominant element of the mark. Similarly, in registrants’ marks, the registrants have disclaimed POWER, LAB, GROUP, and SURVEYING, INC. because purchasers are likely to understand the wording as being merely descriptive of applicants’ goods/services. Thus rendering the initial portion the dominant element of the marks and consequently, the applicant's and registrants’ marks are identical in part creating consumer confusion or mistake as to the source of the goods/services.
Therefore, the marks are confusingly similar and consumers will believe they identify the same source.
Relatedness of the Goods/services
With respect to applicant’s and registrant’s goods/services, the question of likelihood of confusion is determined based on the description of the goods/services 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)).
The applicant’s identified goods and services are: “Industrial grade power supplies, namely, power converters, frequency converters, and electrical switching apparatus used in the aircraft and marine industry” and “Engineering design services and application engineering services in the field of marine frequency power converters and switchboards for yachts and boating applications”. Registrant’s goods and services are, in relevant part, as follows:
Reg. no. 3861509: “Products for distribution and management of electrical power, namely, electrical power sequencers; electrical power conditioners; electrical power suppressors; electrical power distribution units; electrical power distribution blocks; automatic electrical distribution apparatus; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; electric power controllers; and electrical power distributing boxes”
Reg. no. 2372338 and 2372337: “installation of electric power generating systems”
Reg. no. 5357903: “Consulting in the fields of engineering and architecture; Engineering design services; Industrial design; Industrial design services”
Reg. no. 3945522: “Manufacturing services for others in the field of components, structures and electronics utilized in structures and electrical systems of aircraft”
Reg. no. 5533005: “Marine, aerial and land surveying, excluding software and computer engineering, computer programming, computer consulting, software design and development”
The attached Internet evidence from http://www.oeco.com/products/, http://www.safran-electrical-power.com, http://aerospace.honeywell.com/en/products/electric-power/power-generation-and-conversion, http://utcaerospacesystems.com, http://www.astronics.com, http://electrical-marine.com, http://aseapower.com, and http://www.keelmarine.com establishes that the same entity commonly manufactures/produces/provides the relevant goods/services and markets the goods/services under the same mark and the goods/services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods/services 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).
Conclusion
Upon encountering ATLAS MARINE SYSTEMS and the cited registered marks, both used on the respective identified goods/services, consumers are likely to be confused and mistakenly believe that they emanate from a common source. Therefore, registration must be refused under Trademark Act Section 2(d).
Applicant should note the additional potential grounds for refusal immediately below.
ADVISORY: PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
In this case, applicant must disclaim the wording MARINE SYSTEMS because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Applicant’s own Identification states that applicant’s goods/services are in the marine industry. Thus, when purchasers encounter the wording in the applied-for mark, they will immediately understand that applicant’s goods/services are related to the sea. See attached entry from http://www.dictionary.com/browse/marine. Moreover, the attached third party registrations offering same or similar goods/services to applicant’s goods/services and include a disclaimer of the wording MARINE SYSTEMS shows the Office regularly treats the word descriptively. Third-party registrations featuring goods/services the same as or similar to applicant’s goods/services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co. , 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006). Therefore, the wording must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MARINE SYSTEMS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION
As an initial matter, The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and 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 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).
In the present case, the wording in the identification of services is either too broad or indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must specify the common commercial or generic name for the services. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer.
Specifically, the wording “electrical switching apparatus” in Class 009 is too broad and must be further clarified as to the nature of the goods or the specific purpose for the goods. Additionally, the wording “application engineering services” in Class 042 is too broad and must be further clarified as to the nature of the services.
Applicant may adopt the following, if accurate:
Class 009: Industrial grade power supplies, namely, power converters, frequency converters, and electrical switching apparatus for {indicate purpose e.g., for engaging power in converters} used in the aircraft and marine industry
Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e).
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.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Heather A. Sales/
Examining Attorney
Law Office 122
(571) 272-7835
Heather.Sales@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.