United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88107987
Mark: HOMEX
|
|
|
Correspondence Address: |
|
|
Applicant: Panasonic Corporation
|
|
|
Reference/Docket No. 1P3518.10855
Correspondence Email Address: |
|
SUSPENSION NOTICE
No Response Required
Issue date: July 31, 2019
APPLICATION STATUS
This Office action is in response to applicant’s communication filed on Mar. 29, 2019. The application has been divided. The SECTION 2(d) is continued. The amendment in the identification has been made of record as well as the verified application.
Applicant clarified the filing basis for this application and indicated that portions were based on Priority Application 2018-028527 and another portion on Priority Application 2018-081470. The response also indicated that applicant was retaining the Section 1(b) filing basis. The identification and filing basis for this application is listed as follows:
(Based on 44(d) Priority Application 2018-028527) Electric mixers; electric food processors; electric coffee mills for household purposes; electric juicers for household purposes; electric meat grinders for household purposes; electric food blenders for household purposes; (Based on Intent to Use) Electric mixers; electric food processors; electric coffee mills for household purposes; electric juicers for household purposes; electric meat grinders for household purposes; electric food blenders for household purposes
INT. CLASS 007
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until submission of foreign registration or proof that foreign registration was renewed. Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a). Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed. TMEP §§716.02(b), 1003.04. Applicant must also provide an English translation if the foreign registration or renewal document is not in English. 37 C.F.R. §2.34(a)(3)(ii)-(iii).
If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained:
LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5484522. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq
Applicant argues without any evidence that the goods are purchased with considerable care. Here the goods are every-day consumer items. “Generally, casual purchasers of low-cost, every-day consumer items exercise less care in their purchasing decisions and are more likely to be confused as to the source of the goods.” In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)). The examining attorney refers to the attached website showing Mr. Coffee branded coffee machines and coffee mills selling for $14.99 and $15.99. Oster branded blender and toaster for $19.99 and $29.99.
Applicant argues that the cited mark is weak and diluted. 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 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). However even assuming arguendo that applicant has shown that HOME is used with some frequency for the relevant goods. Since the subject marks include both HOME and X, applicant would need to demonstrate use of both words in the same marks to establish any relevant dilution. The examining attorney refers to the attached records showing that marks comprising of HOME and X is strong as the registrant is the only registered mark for kitchen appliances.
Further even if purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
/Benji Paradewelai/
Trademark Attorney
Law Office 101
U.S. Patent & Trademark Office
Tel: (571) 272-1658
Email: benji.paradewelai@uspto.gov
