Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 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:  February 10, 2020

 

The examining attorney apologizes for the delay in raising the following issue:

 

Registration Refused – 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. 3637762. 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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Applicant’s proposed mark is KUBOTA (stylized) for, as currently worded:

 

Class 9: Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; downloadable and recorded computer programs for monitoring flow, energy usage, electric current and electrical signals; downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals, namely, personal digital assistants; Internet servers; downloadable and recorded computer software for network administrations; computers for remote access to computer network; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters, namely, electronic-based instruments for measuring water quality; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; electric valves; flowmeters; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines

 

Class 35: Providing the location and operation status information of the works done by agricultural machines and implements and construction machines and apparatus, namely, farm field management, progress of farm works, planting plan eating quality and yield; providing location and operation status information of earthmoving machines and apparatus, including shield machines and piping connectors used for the execution of civil engineering plans

 

Class 37: Repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; plumbing contractor services, namely, supervision of plumbing services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software

 

Class 40: Technical assistance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations

 

Class 42: Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; consultancy in the field of design of water treatment installations and other industrial buildings; creating or maintaining web sites for others; design services of web sites; design of facilities using computer graphics; design of plumbing using computer graphics; computer system design services; computer-aided design services; industrial design services; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farms; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning

 

Class 44: Farming consultation services, namely, remote monitoring of growing conditions using a sensor; agronomic consulting services in the field of crop management via cloud computing network; farming consultation by means of remote monitoring of farm products via cloud computing network; farming consultation by means of remote monitoring of farm fields via cloud computing network; farming consultation, including the recordation of, notification regarding and measurement and research of farm field information, including soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate via cable or wireless telecommunications networks and computer communications networks.

 

The registered mark is KUBOTA ORANGE PROTECTION PROGRAM for providing extended warranties on tractors, mowers, construction equipment, utility vehicles, and utility equipment.

 

The marks are very similar in that they share the term KUBOTA. With respect to applicant’s mark, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such 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)).

 

With respect to the registered mark, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

The dominant portion of each mark is therefore KUBOTA.

 

Moreover, the services are closely related. The compared goods and services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant provides a variety of agricultural machinery and construction related goods and services, including “repair or maintenance of agricultural machines and implements” and “repair or maintenance of construction machines and implements,” while the registrant offers extended warranties for these goods. Given the similarities between the marks and the close relationship between the goods and services, consumers are likely to believe mistakenly that the goods and services emanate from the same source.   

 

Consequently, there is a likelihood of confusion, and a refusal to register pursuant to Section 2(d) is appropriate in this case. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirement for an acceptable, amended identification and to the requirements for information set forth in the November 7, 2019 action. Those requirements are continued and maintained.

 

TEAS RF Application Requirements

 

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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

 

 

RESPONSE GUIDANCE

 

• How to respond: click to file a response to this non-final office action.

 

• Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight eastern time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

 

·         If needed, find contact information for the supervisor of the law office referenced in the signature block.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 10, 2020 for

U.S. Trademark Application Serial No. 88246849

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 10, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”