UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
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: 12/18/2018
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.
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
U.S. Registration No. 4333233. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered
mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In
re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered.
M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004));
see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
COMPARISON OF 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).
Marks may be confusingly similar where similar terms or phrases or similar parts of terms or
phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228
USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir.
1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin
Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In the present case, applicant’s mark PEUGEOT, stylized, and design, and registrant’s mark, STELLAB PSA PEUGEOT CITROËN, stylized, and design, are
confusingly similar in that they both include the distinctive word PEUGEOT.
When evaluating a composite mark consisting of words and a
design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or
request the goods and/or services. In re Aquitaine Wine USA,
LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (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)). Accordingly, the addition of design elements to applicant’s and
registrant’s marks is insufficient to negate the confusing similarity between them.
COMPARISON OF GOODS/SERVICES
The goods and/or services 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).
In the present case, applicant’s automotive computer and electronics products, in International Class 9, automotive
retail and business/advertising services, in International Class 35, automotive telecommunication services, in International Class 38, and automotive engineering and technical services, in
International Class 42, and registrant’s educational services concerning the automotive industry are related in that they concern automobiles and because they otherwise comprise the types of goods
and services which frequently emanate from a common source. In the latter regard, see the enclosed representative sample of third-party registrations whose identifications include both applicant’s
goods/services and registrant’s services, as described above.
Based on the similarity between applicant’s and registrant’s marks and the relatedness of their goods and/or
services, as described above, a likelihood of confusion as to the source of these goods and services must be deemed to exist.
If the mark in the cited registration is owned by applicant,
applicant may provide evidence of ownership of the mark by satisfying one of the following:
(1) Record the assignment with the USPTO’s
Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark
examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing
the chain of title.
(3) Submit the following statement, verified
with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 4333233.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then,
continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow
the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response
Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP
§502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a
response to an Office action. TMEP §503.01(d).
If applicant responds to the refusal, applicant must also respond
to the requirements set forth below.
IDENTIFICATION OF GOODS
The identification of goods is indefinite and must be clarified
because it does not sufficiently identify the nature of applicant’s starter cables for vehicles, tire balancing units and machines for vehicles and reflector discs for the prevention of traffic
accidents. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Transmitters and receivers to locate vehicles by satellite; satellite-aided navigational systems; vehicle radios; navigation apparatus for vehicles (on-board computers); vehicle remote control
apparatus, namely, keyless entry system and keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and keyfob with electronic signal
transponder; telephone apparatus for vehicles; vehicle data processing apparatus; apparatus and monitoring devices for vehicles, namely, on-board vehicular surveillance system comprised of cameras
and monitors for exposing and eliminating the blind spots on both sides of the vehicle; apparatus and monitoring devices, namely, vehicle tracking devices comprised of cellular radio modules,
computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle monitoring and
anti-theft vehicle alarms; automatic alarm indicators of low pressure in vehicle tires; acoustic sound alarms; batteries for lighting and electric batteries for vehicles; autonomous electronics box
containing control circuits for theft prevention and theft reporting; vehicles' pressure indicator plugs for valves; battery starter cables for vehicles motors; electric cables
for vehicles; calculators for vehicles; cinematographic cameras for vehicles; blank USB flash drive; pre-recorded USB flash drive featuring software for tracking vehicle location for theft recovery
purposes, tracking vehicle maintenance and repairs, and monitoring vehicle status; revolution counters for vehicles, namely, odometers; meters/counters for vehicles, namely, odometers; condensers and
electric resistances; speed checking apparatus for vehicles, namely, speedometers; tire balancing units and machines for land vehicles; water and oil level indicators for
vehicles; speed indicators for vehicles; optical character readers, namely, data processing equipment; spectacles; computer memories; computers; modems; gasoline gauges for vehicles; on board
computers for vehicles and their operating software; audio and video receivers for vehicles; voltage regulators for vehicles; gauge rheostats for vehicles; luminous signs for vehicles; simulators for
the steering and control of vehicles; thermostats for vehicles; vehicle breakdown warning triangles; individual reflector discs for wear for the prevention of traffic accidents;
computer software and computer programs for tracking vehicle location for theft recovery purposes, tracking vehicle maintenance and repairs, and monitoring vehicle status; software applications for
cellular phones, namely, software for tracking vehicle location for theft recovery purposes, tracking vehicle maintenance and repairs, and monitoring vehicle status; smartphones; PDAs; mobile
electronic apparatus software applications, namely, software for tracking vehicle location for theft recovery purposes, tracking vehicle maintenance and repairs, and monitoring vehicle status;
software and computer applications in the maintenance, repairing, managing and vehicle location fields, namely, for tracking vehicle location for theft recovery purposes, tracking vehicle maintenance
and repairs, and monitoring vehicle status; holographic apparatus for vehicles, namely, electronic machines used to apply holographic overlay and to set up and control holograms and verification
thereof; antennas for vehicles; fire extinguishers for vehicles; projection screens for vehicles; microprocessors for vehicles; sonars for vehicles; electronic scoreboards for vehicles; optical
glasses.
IDENTIFICATION OF SERVICES
The identification of services in International Class 35 is
indefinite and must be clarified because it does not sufficiently identify the nature of applicant’s presentation services. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may adopt the following identification, if accurate: The bringing together, excluding the transport thereof,
for the benefit of others, vehicles and used vehicles, and their parts and accessories, enabling customers to conveniently view and purchase those goods; advertising and marketing for vehicles and
used vehicles; promoting the vehicles and used vehicles of others; organizing and conducting product presentation of new vehicles and of used vehicles, their parts and
accessories on any communication media for both wholesale and retail purposes; organization of exhibitions for commercial and advertising purposes; business organizational consulting services; public
and corporate affairs in the automotive sector, namely, publicity consultation and corporate image consulting services; consumer information and commercial product advice for consumers in relation
with vehicles.
The identification of services in International Class 38 is
indefinite and must be clarified because it does not sufficiently identify the nature of applicant’s “Telecommunication services” and electronic mail services.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate: Telecommunications
services, namely, {indicate specific services};, communications and network communications services, namely, transmission of voice, data, graphics, sound and video by
means of telecommunications networks, wireless communication networks, and the Internet; global communication services in relation with vehicles, namely, providing Internet access, satellite network
transmission of sounds, images, signals, and data, and telephony communication services; transmission of electronic mail services; electronic data transmission; broadcasting
information via electronic means, namely, global communication networks services similar to the Internet, data communication networks, and the Internet; telematics services, namely, telematic sending
of information; telecommunication services, namely, information transmission by telephone and via the Internet in connection with urgent technical support and assistance; information transmission
services by satellite and computer networks.
The identification of services in International Class 42 is
indefinite and must be clarified because it does not sufficiently identify the nature of applicant’s computer consulting. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may adopt the following identification, if accurate: Engineering services, namely, evaluations, energy
efficiency estimates and scientific and technological research; design and development of computer hardware and software; research and development of new products for third parties; technical project
study, namely, research in the fields of vehicle engineering, tracking, efficiency, monitoring and design; architectural services; design of interior decor; developing and designing software;
software installation; computer services, namely, remote and on-site management of software for others; software updating; renting software; computer programming; computer software consulting; data and computer program conversion other than physical conversion; data and document conversion from physical to electronic media; vehicle roadworthiness testing;
graphic design services; industrial design services; authenticating art work; industrial research services in the field of renewable energy; design of new products, namely, vehicles, using ecology
and new technologies; testing and research services in the field of vehicles pollution control; vehicles quality control services for others; technological consulting services on renewable energy
resources; consulting services on renewable energy research.
Applicant’s goods and/or services may be clarified or limited,
but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP
§1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however,
applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is
generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any
acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must
specify whether “PEUGEOT” in the mark has any meaning in a foreign language. See 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §§809, 814. If the wording has meaning in a foreign language, applicant must provide an English translation, and may use the following format: The
English translation of “PEUGEOT” is “{indicate English translation}”. TMEP §809.03.
Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following
statement: The wording “PEUGEOT” has no meaning in a foreign language.
Id.
RESPONSE TO OFFICE ACTION
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.
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@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.
