UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88210968
MARK: BEYOND
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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: Trane International Inc.
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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: 2/8/2019
Search Results
Summary of Issues That Applicant Must Address
· Section 2(d) refusal based on a likelihood of confusion with a registered mark
· Amendment of classification and identification of goods
· Multiple-class application requirement
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant’s mark is “BEYOND for “Air conditioners; furnaces; heat pumps; fluid coolers; air coolers; water heaters; filters; electrostatic air filters; chillers; air delivery and handling units for cooling, heating, and ventilating; air induction units; humidifiers; ventilators; diffusers; blenders and convectors; terminal air units; variable air volume units; refrigeration machines and parts thereof namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers, fin and tube coils, convectors, ventilators, roof ventilators, unit heaters, gas fired unit heaters, furnaces, fans, centrifugal fans, propeller fans, humidifiers, grilles, and diffusers” in International Class 11 and other goods and services relating to the applicant’s goods in International Class 11. See the application for the complete identification of goods and services.
The two cited marks owned by the same registrant are “BEYOND” and “BEYOND BY AERUS” for “air purification units” in International Class 11.
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
The applicant’s mark is “BEYOND.” The two cited marks owned by the same registrant are “BEYOND” and “BEYOND BY AERUS.”
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).
The marks are highly similar because the applicant’s mark is identical to one of the marks and the applicant’s share the identical wording with the registrant’s other mark.
In the present case, applicant’s mark is “BEYOND” and registrant’s one mark is “BEYOND”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
As to the second registered mark, “BEYOND BY AERUS”, the applicant’s mark deletes a portion of the registrant’s mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. The registrant’s registration of “BEYOND” further supports that the prospective purchasers would recognize the registrant’s mark as a shortened form of registrant’s mark
Since the marks are highly similar in sound and meaning, they impart a confusingly similar commercial impression.
Relatedness of the Goods and Services
The applicant’s relevant goods and in International Class 11 are “Air conditioners; furnaces; heat pumps; fluid coolers; air coolers; water heaters; filters; electrostatic air filters; chillers; air delivery and handling units for cooling, heating, and ventilating; air induction units; humidifiers; ventilators; diffusers; blenders and convectors; terminal air units; variable air volume units; refrigeration machines and parts thereof namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers, fin and tube coils, convectors, ventilators, roof ventilators, unit heaters, gas fired unit heaters, furnaces, fans, centrifugal fans, propeller fans, humidifiers, grilles, and diffusers” in International Class 11 and other goods and services relating to the applicant’s goods in International Class 11. Specifically, the applicant’s goods in International Class 7 and 9 are for operating the applicant’s goods in International Class 11 and the applicant’s services in International Class 37 and 42 relate to servicing the applicant’s goods in International Class 11. See the application for the complete identification of goods and services.
The registrant’s goods are “air purification units.”
Here, the applicant’s various apparatus, installations and parts are for air cooling and heating and these the goods for use with cooling and heating installation are related to air purification units and they are likely to come from a common source.
Additionally, the applicant’s installation, maintenance in the nature of technical support as well as equipment maintenance and repair relating to air controlling goods in International Class 11 are closely related goods air purification units. Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
Purchasers of applicant’s goods and services could mistakenly assume such goods were produced by registrant, or that applicant and registrant are related in some way. Because the marks are confusingly similar and the goods and services are related, the similarities among the marks and the goods and services are so great as to create a likelihood of confusion among consumers as to the source of the goods and services.
Accordingly, since the marks are confusingly similar and the goods and services are closely related, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Trademark Act.
Amendment of Classification and Identification of Goods
Specifically, the goods in International Class 11 are indefinite and requires further specification. The applicant must amend the identification to indicate the specific use or common commercial name of the goods as suggested below. Additionally, the identification of goods in International Class 11 includes goods which may be classified in other International Classes. Accordingly, the applicant must amend the identification to indicate the specific nature of the goods and classify them in proper International Classes as suggested.
Please note that the services in International Classes 37 and 42 are acceptable as written.
Suggested amendments appear in bold, while wording that requires further clarification appears in italics. The correct classification for the goods/services also appears below.
Applicant may adopt the following identification, if accurate:
“Electrical, electronic, mechanical and pneumatic controls for heating, ventilating, air condition and refrigeration equipment; computerized building automation and energy management systems comprising computers, computer software, electronic controllers and data communication lines for remotely controlling and for remotely monitoring, recording and reporting operating conditions of building heating, ventilating, air condition and refrigeration equipment; and parts thereof; Computer-based building automation system for monitoring, controlling and reporting the use and status of lighting, energy consumption, security systems and heating, cooling and ventilation equipment comprising a computer cathode ray tube (CRT), computer operating programs, keyboard, printer, building zone area sensors and monitors, subcomputers in the nature of laptops, board level computers, and power controllers associated therewith; electrical and electronic controllers for heating, cooling and ventilating equipment; building automation computer hardware and software for integrating multiple building systems into one centralized platform; building integration and management software designed for large building applications or multiple buildings within portfolio; computer software and hardware for use with smart grid applications; software for monitoring, controlling, and regulating building energy consumption based on utility supply and demand; energy utilization metering devices complete with related software” in International Class 9;
“Air conditioners; furnaces; heat pumps; fluid coolers being parts for HVAC system; evaporative air coolers; water heaters; filters for {INDICATE specific type of filters, e.g., air filters for air conditioning units}; electrostatic air filters for air conditioning units; chillers, namely, {INDICATE common commercial name or specific use of the goods, e.g., cooling systems comprising an evaporator, compressor, condenser and expansion device for use in commercial and industrial buildings, blast chillers for commercial food preparation and storage}; air delivery and handling units in the nature of air conditioners for cooling, heating, and ventilating; air conditioning units consisting of air induction units, humidifiers, ventilators, diffusers, blenders and convectors; terminal air conditioning units; variable air volume units in the nature of air conditioner; refrigeration machines and parts thereof namely, compressors, condensers, evaporators, economisers, heat exchangers, receivers, mufflers, and strainers; heat exchangers not being part of machines, fin and tube coils as parts of heating or cooling installations, convectors, namely, {INDICATE specific use of the goods or common commercial name of the goods, e.g., radiators, space heating apparatus}, ventilators for air conditioning apparatus, roof ventilators for air conditioning apparatus, unit heaters, namely, electric space heater, gas fired unit heaters, namely, gas fired space heater, furnaces, fans, namely, {INDICATE type of fans properly classified in International Class 11, ventilating fans for commercial and industrial use, ventilating exhaust fans, portable electric fans}, centrifugal fans for HVAC units, propeller fans for HVAC units, humidifiers, grilles, namely, ventilation fan accessories, and diffusers for {INDICATE specific application, e.g., air diffusers for freezer, hair dryer diffusers}” in International Class 11;
“fluid coolers being parts for machines; heat exchangers being part of machines” in International Class 7;
“fans, namely, {INDICATE type of fans}”[classification depends on the types of fans, e.g., portable non-electric fans for personal use in Class 20, internal cooling fans for computers in Class 9];
“diffusers for {INDICATE specific application, e.g., use in photography in class 9}”.
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.
Multiple-Class Application Requirement
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least six classes; however, applicant submitted a fee(s) sufficient for only five classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response to Office Action
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Jenny Park/
Examining Attorney
Law Office 104
571-272-8857
jenny.park@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.