United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88103294
Mark: PREVENT
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Correspondence Address:
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Applicant: Hubbell Incorporated
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Reference/Docket No. 45983-9937
Correspondence Email Address: |
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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: July 18, 2019
This Office action is in response to applicant’s communication filed on June 19, 2019.
In a previous Office action dated December 20, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for likelihood of confusion with two registered marks.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Section 2(d) Likelihood of Confusion Refusal as to Registration No. 3799772
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied for the standard character mark having the literal element PREVENT for goods identified as “lighting fixtures.”
Registrant’s mark is “PREVENTA” for the relevant goods identified as “Electric or electronic checking and monitoring, protection and safety apparatus, namely, electrical programmable logic controllers, electric controllers, electric safety modules, electrical switches, magnetic switches, electrical position switches, electric push-button switches, electric foot switches, electric switch disconnectors, electric circuit breakers, light indicators, terminal blocks, electric control stations; [ electric measuring apparatus, namely, voltmeters, ammeters, frequency meters, circuit testers, power meters; ] electric detection apparatus, namely, photoelectric sensors, transmitters and receivers for electric signals; safety devices, namely, safety light curtains, safety mats.”
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.
SIMILARITY OF THE MARKS
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). To that point, applicant has not argued that applicant’s mark “PREVENT” and registrant’s mark “PREVENTA” are not similar, and as such, this determination is maintained for both the following reasons and for those outlined in the prior Office Action dated December 20, 2018.
As noted in the initial Office Action, marks may be confusingly similar in appearance 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). The parties’ marks consist of the highly similar wording “PREVENT”/”PREVENTA” creates a similar appearance and overall commercial impression as the mere addition of this letter “A” to registrant’s marks makes little difference in the appearance, meaning, and commercial impression of these two similar words.
Furthermore, the similarities of the marks having been established, the strength of the marks must be addressed as applicant argues that the use of the wording “PREVENT” in other third-party registrations would allow for the coexistence of applicant’s and registrant’s marks. However, Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “PREVENT” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. This registration appears to be for goods similar to those identified in applicant’s application.
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. 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. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a 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). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording “PREVENT” is weak or diluted. In that regard, applicant has only offered one such third-party registration, and as such, this one registration is insufficient in demonstrating that the term “PREVENT” is entitled to a narrowed scope of protection such that the parties’ marks may coexist.
Therefore, as both applicant’s and registrant’s marks are substantially similar in sound, appearance, meaning, and overall commercial impression, the determination of similarity between the marks is maintained.
RELATEDNESS OF THE IDENTIFICATION OF GOODS
In addition to the marks being substantially similar, the goods in this comparison are also related, if not identical. In that regard, the marks are highly similar as they only differ as to one letter added to the end of registrant’s mark, and the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). Therefore, due to the close similarities between the marks, the degree of relatedness between the parties’ goods declines.
To that point, it is important to note that when analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services 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)). Therefore, although applicant has attached evidence allegedly demonstrating the actual use of the registrant’s mark in the marketplace is unpersuasive and is not considered as the relatedness determination is based on the goods as recited in the application and registration not on any extrinsic evidence of actual use.
As such the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. Therefore, applicant’s argument that the parties’ respective goods are different or distinguishable from one another is insufficient to demonstrate that the goods are unrelated. Rather, the determination is based on whether the manner in which the goods are offered in the marketplace creates a likelihood of confusion as to the source or sponsorship of such goods which has been demonstrated by the evidence attached hereto and to the previous Office Action.
Further to the point, applicant argues that the fact that the parties’ goods are classified in different classes supports that such goods are unrelated. However, the fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d). See TMEP §1207.01(d)(v). The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion. In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)). Thus, this argument is unpersuasive in indicating that the goods at issue here are unrelated.
Furthermore, the attached Internet evidence, consisting of webpages from www.warehouse-lighting.com, www.lightingsupply.com, www.legrand.us, www.leviton.com, www.lutron.com, www.schneider-electric.com, www.mylampparts.com, www.efficientlightingsupply.com, and www.westwayelectricsupply.com, establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and/or the goods are similar or complementary in terms of purpose or function in that registrant’s electrical goods may be utilized with applicant’s lighting fixtures. Thus, applicant’s and registrant’s goods and/or 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). See the attached internet evidence from the website links above demonstrating that lighting fixtures as well as a variety of electrical goods including, but not limited to, electrical controllers, electrical switches, circuit breakers, and photoelectric sensors such that use of similar marks in connection therewith, as in the present case, create a likelihood of confusion. To that point, the fact that such goods are offered in these same channels of trade and from the same producers to be utilized for the same or complementary purposes indicates that such goods are related despite applicant’s arguments to the contrary.
To that point, applicant argues that the parties’ goods will be offered by “different consumers in different channels of trade.” See applicant’s Response to Office Action dated June 19, 2019. However, the presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii). Thus, as neither the registration nor the application contain restrictions or limitations as to the channels of trade in or the classes of purchasers to which the goods are offered, the applicant’s arguments that such goods will move through different channels of trade and be sold to different consumers is unpersuasive as the attached evidence clearly indicates that such goods commonly emanate from the same source and are sold in the same channels of trade.
In that regard, as applicant’s goods commonly emanate from the same source and through the same channels of trade, the parties’ respective goods are related for likelihood of confusion purposes.
For these reasons, consumers are likely to encounter the applicant’s and registrant’s respective goods in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods provided under the marks. Accordingly, the refusal to register the applied-for mark based on Trademark Act Section 2(d) is maintained and made final.
APPLICANT’S RESPONSE OPTIONS
(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).
COMMUNICATIONS WITH THE 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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
Lauren Roncoroni
/Lauren Roncoroni/
Trademark Examining Attorney
Law Office 109
Phone: (571) 270-5661
Lauren.Roncoroni@uspto.gov
RESPONSE GUIDANCE