To: | Metro CAD, Inc. (wes@schwielaw.com) |
Subject: | U.S. Trademark Application Serial No. 88243490 - MMT - METRO.002T |
Sent: | September 02, 2020 07:58:29 AM |
Sent As: | ecom123@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88243490
Mark: MMT
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Correspondence Address: |
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Applicant: Metro CAD, Inc.
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Reference/Docket No. METRO.002T
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 02, 2020
On June 11, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87937588. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:
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. 5985234. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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. 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 and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
Applicant's mark is MMT.
Registrant's mark is MMT.
In the present case, Applicant’s mark is “MMT” and Registrant’s mark is “MMT”. 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. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Applicant's goods are Microscopes, including stereomicroscopes; microscope accessories being articulating arms, light sources, mounts, backlights; and microscopes and parts thereof, namely, eyepieces, reticles, heads, objective lenses, extensions; laboratory furniture, including furniture for cleanrooms.
Registrant's goods are Laser object detectors for use on vehicles; Lasers for measuring purposes; Lidar apparatus; Proximity sensors; Electronic proximity sensors and switches; Measuring apparatus, namely, laser distance meters; three dimensional (3D) sensors and scanners.
The attached Internet evidence from Keyence, Hamamatsu, and Jenoptik establishes that the same entity commonly provides the relevant goods, namely, microscopes or microscope parts and measuring lasers, sensors, or scanners, and markets the goods under the same mark. This evidence also demonstrates that the relevant goods are sold through the same trade channels.
The Trademark Examining Attorney has also attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both Applicant and Registrant in this case. This evidence shows that the goods listed therein, namely, microscopes or microscope parts and measuring lasers, sensors, or scanners, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). See attached Registration Nos. 4045652, 5032477, 5171224, 5368440, and 5695874.
Moreover, to the extent the evidence may not address all of the items in Applicant’s identification, relatedness does not have to be established for every product. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified goods, which is enough to show a likelihood of confusion.
Therefore, Applicant’s and Registrant’s goods are considered related for likelihood of confusion purposes.
Conclusion
For the foregoing reasons, registration of the applied-for mark is refused pursuant to Section 2(d) of the Trademark Act.
If Applicant responds to the refusal, then Applicant must also respond to the requirement set forth below.
Amended Identification of Goods Required
The identification for “microscope accessories” in International Class 9 is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification. See TMEP §§1402.01, 1402.03(a).
Applicant may adopt the following wording in Class 9, if accurate:
Microscope parts being articulating arms, light sources, mounts, backlights
Scope Advisory
ID Manual Online
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
HOW TO RESPOND
For this application to proceed, Applicant must explicitly address each refusal and 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.
Click to file a response to this nonfinal Office action.
ASSISTANCE
Please call or email the assigned Trademark Examining Attorney with questions about this Office action. Although the Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the refusal and requirement in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Samantha Sherman/
Examining Attorney
Law Office 123
571-270-0903
samantha.sherman@uspto.gov
RESPONSE GUIDANCE