United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88252428
Mark: SEQUEL
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Correspondence Address:
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Applicant: Altronix Corporation
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Reference/Docket No. 20270-2050
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: October 30, 2019
This Office action is in response to applicant’s communication filed on October 4, 2019.
In a previous Office action dated April 5, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d).
Applicant’s arguments with respect to the refusal(s) have been considered and found unpersuasive for the reasons set forth below. The trademark examining attorney maintains and now makes FINAL the refusal(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) REFUSAL(S) – LIKELIHOOD OF CONFUSION
THE INDIVIDUAL REFUSAL(S) APPLY ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
See the previously attached registrations.
The applied-for mark SEQUEL (standard character) is for “Power supplies, uninterruptible power supplies (UPS) and redundant power supplies for security, fire, CCTV, access control, home automation, life safety and low voltage industrial product sectors” in International Class 009; “Manufacture of power supplies, uninterruptible power supplies (UPS), redundant power supplies and electrical components for security, fire, CCTV, access control, home automation, life safety and low voltage industrial product sectors to order and/or specification of others” in International Class 040; and “Design of power supplies, uninterruptible power supplies (UPS), redundant power supplies, and electrical components for security, fire, CCTV, access control, home automation, life safety and low voltage industrial product” in International Class 042.
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.
In this case, both key considerations (i.e., similarity of the marks and relatedness of the goods and/or services) support refusal of the applicant’s mark for registration.
Similarity of the Marks
In the present case, applicant’s mark is SEQUEL and the mark in U.S. Registration No. 1833252 is also SEQUEL. Both of these marks are in standard character or its equivalent. Accordingly, 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.
Applicant agrees in its response of October 4, 2019, that the applied-for mark is identical to the mark in U.S. Registration No. 1833252.
In light of all the foregoing, the applicant’s mark and the mark in U.S. Registration No. 1833252 are confusingly similar.
As to the marks in U.S. Registration Nos. 3622743 and 2170670, 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Applicant argues that the mark in U.S. Registration No. 3622743 differs from the applied-for mark in appearance pronunciation, connotation, and commercial impression. In support of this assertion, applicant argues only that the wording in the registered mark (“SEQUIL”) has no apparent English meaning, whereas the wording in the applied-for mark is a defined term in the English language and contains the letter “E” where the registered mark contains the letter “I”. The trademark examining attorney is not persuaded by this argument. The applied-for mark SEQUEL is clearly identical in sound and highly similar in appearance and commercial impression to the registrant SEQUIL Systems, Inc.’s SEQUIL mark. The marks differ by just one vowel appearing as the final vowel toward the end of each mark. The differing vowel does not change the identical phonetic pronunciation of the terms. (See previously attached evidence from Useful English showing that the vowels “E” and “I” share the same neutral sound.) Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Nor is there a correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv).
As explained above, the marks in question could be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). The marks are also visually similar, differing only by one vowel toward the end of each mark. Accordingly, the applied-for mark conveys a highly similar overall commercial impression to that of the SEQUIL mark because the marks are highly similar in appearance and phonetically identical. As such, the marks are likely to cause confusion when used on or in connection with highly similar or closely related goods and/or services. The high likelihood of confusion supports refusal of the applicant’s mark for registration.
As to the mark in U.S. Registration No. 2170670, applicant argues that the appearances and pronunciations of the respective marks are “highly distinct” because the registered mark SEQUEL MINIPAC is comprised of two terms and five syllables, whereas the applied-for mark is comprised of a single term and two syllables. The trademark examining attorney is not persuaded by this argument. 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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Accordingly, consumers will be more inclined to focus on the term “SEQUEL” as the more prominent feature of the SEQUEL MINIPAC mark. The term “SEQUEL” is identical to the applicant’s mark, and the registrant’s mark is therefore confusingly similar to the applicant’s mark such that the marks are likely to cause confusion when used on or in connection with highly similar or closely related goods and/or services. The high likelihood of confusion supports refusal of the applicant’s mark for registration.
Further, the wording “MINIPAC” in the registered mark SEQUEL MINIPAC does not affect the commercial impression of the wording “SEQUEL”, which is identical and shared with the applied-for 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.
Applicant also argues that the cited registered marks are not entitled to a broad scope of protection because other “SEQUEL-formative marks” coexist and are used in connection with different goods and services in class 009 and 042. Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “SEQUEL” or similar terms 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. These registrations appear to be for goods and/or services that are predominantly different from 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 third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording “SEQUEL” is weak or diluted.
In summary, the applicant’s mark conveys an overall commercial impression highly similar to the registered marks because the marks are identical or nearly identical in the dominant and more distinctive portions of the marks. As such, the marks are likely to cause confusion when used on or in connection with highly similar or closely related goods and/or services. The high likelihood of confusion supports refusal of the applicant’s mark for registration.
Relatedness of the Goods and/or Services
In its response of October 4, 2019, applicant argues that its goods and services are limited in scope. In particular, applicant argues that the identified goods and services are limited to those “for security, fire, CCTV, access control, home automation, life safety and low voltage industrial product” sectors, are thus limited as to their nature and type, and therefore do not relate to the goods and/or services identified in the cited registered marks. The trademark examining attorney does not agree. The various sectors listed in the applicant’s identification of goods and services are broadly worded and can encompass many different goods and/or services. For example, the wording “security” can relate to (inter alia) “security engineering” (http://www.sciencedaily.com/terms/security_engineering.htm) and “security lighting” (http://www.hubbell.com/securitylighting/en/); the wording “fire” can relate to (inter alia) “fire engineering” (http://www.firescience.org/fire-engineering-degree/) and “emergency lightbars, lighting systems, sirens and more” in the “Fire/EMS” industry (http://www.fedsig.com/fireems); the wording “CCTV” and “Access Control” can relate to (inter alia) engineering (http://www.granitenet.com/job/Quincy/accesscctv-engineer/4309); the wording “CCTV” can also relate to lighting (http://bushwickretailers.com/products/best-seller-cctv-camera-light-bulb?variant=29291772837991&utm_medium=cpc&utm_source=google&utm_campaign=Google%20Shopping&gclid=CjwKCAjwxt_tBRAXEiwAENY8hWfjaT0xm1CDpkUw-f6JkeZhozbirMzoF6iFiXPxhMKZx0j9WDNe1xoC7-gQAvD_BwE); the wording “home automation” can relate to (inter alia) engineering and lighting (http://glewengineering.com/engineers-organize-smart-homes/); the wording “life safety” can relate to (inter alia) engineering (http://www.safetyinfo.com/engineering-concepts-safety-index/) and lighting (http://www.automationdirect.com/adc/overview/catalog/safety/safety_light_curtains_(category_4_-z-_type_4)); and “low voltage industrial product” can relate to (inter alia) engineering (http://www.enengineering.com/expertise/power-transmission-distribution/) and lighting (http://www.amazon.com/Watt-Voltage-Fixture-Industrial-Lighting/dp/B00HS8BFYC).
The applicant also argues that “the incredibly broad and highly generalized services identified simply as ‘engineering’” in U.S. Registration No. 3622743 are not related to applicant’s services. However, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). In this case, as applicant notes, the registration uses broad wording to describe “engineering”, which presumably encompasses all services of the type described, including those that are related to applicant’s services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
The attached Internet evidence, consisting of the web pages of Vertiv (http://www.vertiv.com/en-us/products/; http://www.vertiv.com/en-us/about/; http://www.vertiv.com/en-us/services-catalog/services/project-services/installation-services/), Digital Power (http://digipwr.com/about-us/core-strengths/), U.S. Technologies Power Supply (http://ustpowersupply.com/engineering-design-manufacture.php), Bear Power Supplies (http://www.bearpwr.com/custom-power-supplies/made-in-the-usa/), and AJ’s PowerSource (http://www.ajpowersupply.com/custom-power-supply/), which offer the design and manufacture of power supplies, uninterruptible power supplies (UPS), redundant power supplies and electrical components for security, fire, CCTV, access control, home automation, life safety and low voltage industrial product sectors (Application) under the same mark as “engineering” services (U.S. Registration No. 3622743), establishes that the same entity commonly markets and provides the relevant services under the same mark.
The attached Internet evidence, consisting of the product pages of Mitsubishi (http://www.universitymitsubishi.com/mitsubishi-electric-introduces-a-new-lighting-system/; http://eu3a.mitsubishielectric.com/fa/en/products/cnt/plcq/items/power_supply/#pageUnit04; http://www.mitsubishicritical.com/), Emerson (http://www.emerson.com/en-us/catalog/power-protection/uninterruptible-power-systems?fetchFacets=true#facet:&facetLimit:&productBeginIndex:0&orderBy:&pageView:grid&minPrice:&maxPrice:&pageSize:&; http://www.emerson.com/en-us/catalog/solahd-sdn-c-red?fetchFacets=true#facet:&facetLimit:&productBeginIndex:0&orderBy:&pageView:list&minPrice:&maxPrice:&pageSize:&; http://www.emerson.com/en-us/automation/electrical-component-lighting/lighting; http://www.lumens.com/sw605-wall-control-by-emerson-fans-uu306281.html), Big Beam (http://www.bigbeam.com/products/il/; http://www.bigbeam.com/central-inverter-systems/), and Legrand (http://www.legrand.us/adorne/products/under-cabinet-lighting-power/allnledtm4.aspx; http://www.legrand.us/lighting-controls-building-systems/wall-box-dimmers.aspx; http://www.legrand.us/markets-solutions/building-networks/uninterrupted-power-supply.aspx; http://www.legrandintegratedsolutions.com/products/52-port-stackable-gigabit-poe-l2-l3-managed-switch-hdip), which offer power supplies, uninterruptible power supplies (UPS) and/or redundant power supplies for security, fire, CCTV, access control, home automation, life safety and low voltage industrial product sectors (Application) under the same mark as “dimming controls for electric lighting fixtures” (U.S. Registration No. 1833252) and/or “electric lighting fixtures” (U.S. Registration No. 2170670), establishes that the same entity commonly markets and provides the relevant goods under the same mark.
Thus, applicant’s and registrants’ 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).
The similarity of the marks and relatedness of the goods and/or services supports the refusal(s) of the application.
Based on the foregoing, the refusal(s) of registration under Section 2(d) of the Trademark act are made FINAL.
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)
Shinn, Lauren
/Lauren D. Shinn/
Trademark Examining Attorney
Law Office 128
(571) 270-5230
Lauren.Shinn@USPTO.gov
RESPONSE GUIDANCE
