UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/2/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

TRADEMARK COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

 

SUMMARY OF ISSUES:

• SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
• PRIOR-FILED APPLICATION

 

 

SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 79045220 and 3485253.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is “STEADY” (plus design) for “Apparatus for transmission of communication; Batteries, electric; Camcorders; Chargers for electric batteries; Computer monitors; Electric cables and wires; Neon signs; Theft alarms; Transformers; Voltage stabilizing power supply” in International Class 009.

 

Cited registrations owned by Telegärtner Karl Gärtner GmbH are:

 

Registration 3472629   “STEADYTEC” (in standard character format) for “Electric and electronic connecting apparatus in the field of the transmission of electrical energy, data, and electrical signals for industrial, residential and commercial use, namely, electrical power supplies, electrical components in the nature of protection relays, voltage surge protectors, electric accumulators, electric capacitors, electric cables, electric current switches, electric diodes, electric converters, electric fuse boxes, electric installations for the remote control of industrial operations; electric and electronic connecting terminals and connectors in the fields of data, energy and signal transmission, namely Ethernet cable connectors, plug connectors, plug-in connectors, tool-less electrical connectors, crimp electrical connectors, insulation-piercing electrical connectors, duplex electrical connectors, adaptor plugs, adapters, cable connectors, electric connectors, battery terminal connector clamps, insulated electrical connectors, electrical connection boxes, electric fuse boxes; electronic devices including their parts, namely, electric door opening and closing systems; electrical cables for transmitting energy and data for industrial, residential and office use, namely, flat cables, round cables, ducting for electrical cables, electric wires, electrical cables and cord sets, electrical plug-in devices enabling connection and disconnection of power and control cables, Ethernet cables, fiber-optic cables, battery cables; insulated housings for electric apparatus, namely, electric plug housings, electric junction boxes, electric outlet boxes, waterproof junction boxes, protective housings in the nature of electrical accumulators, electric capacitors, electric cables, electric current switches, electric diodes, electric converters, electric fuse boxes with and without integrated electrical distributors and electric couplings; electrical power supplies, namely, high-frequency switching power supplies, batteries, battery chargers, voltage stabilizing power supplies, current converters; repeaters, namely, Ethernet repeaters; gateways, namely, gateway routers in the nature of computer control hardware; electric and electronic sensors for measuring solar radiation, water levels, temperature, humidity, distance, digital input and output scanners, track ball input devices; computer hardware in the nature of circuit boards provided with integrated circuits, computer expansion boards, computer interface boards; and voltage and power distribution and protection systems composed of breakers and switchgear, namely, electrical fuses, electrical current switches, electrical connection boxes, electric fuse boxes, circuit breakers, electric switches, electrical connection boxes, electric fuse boxes, switch boxes, and relays and modules for overvoltage protection, namely, static voltage regulators, voltage surge suppressors, voltage surge protectors, voltage regulators for electric power, electric voltage transformers; electric junction box housings, electric switch housings, electrical connector housings, housings for printed circuit boards, electrically insulated housings for electrical apparatus made from synthetic plastic material” in International Class 009.

 

Registration 3485253 for “STEADYTEC” (plus design) for “Electric and electronic connecting apparatus in the field of the transmission of electrical energy, data, and electrical signals for industrial, residential and commercial use, namely, electrical power supplies, electrical components in the nature of protection relays, voltage surge protectors, electric accumulators, electric capacitors, electric cables, electric current switches, electric diodes, electric converters, electric fuse boxes, electric installations for the remote control of industrial operations; electric and electronic connecting terminals and connectors in the fields of data, energy and signal transmission, namely, Ethernet cable connectors, plug connectors, plug-in connectors, tool-less electrical connectors, crimp electrical connectors, insulation-piercing electrical connectors, duplex electrical connectors, adaptor plugs, adapters, cable connectors, electric connectors, battery terminal connector clamps, insulated electrical connectors, electrical connection boxes, electric fuse boxes; electronic devices including their parts, namely, electric door opening and closing systems; electrical cables for transmitting energy and data for industrial, residential and office use, namely, flat cables, round cables, ducting for electrical cables, electric wires, electrical cables and cord sets, electrical plug-in devices enabling connection and disconnection of power and control cables, Ethernet cables, fiber-optic cables, battery cables; insulated housings for electric apparatus, namely, electric junction box housings, electric switch housings, electrical connector housings, housings for printed circuit boards, electrically insulated housings for electrical apparatus made from synthetic plastic material, electric plug housings, electric junction boxes, electric outlet boxes, waterproof junction boxes, protective housings in the nature of electrical accumulators, electric capacitors, electric cables, electric current switches, electric diodes, electric converters, electric fuse boxes with and without integrated electrical distributors and electric couplings; electrical power supplies, namely, high-frequency switching power supplies, batteries, battery chargers, voltage stabilizing power supplies, current converters; repeaters, namely, Ethernet repeaters; gateways, namely, gateway routers in the nature of computer control hardware; electric and electronic sensors for measuring solar radiation, water levels, temperature, humidity, distance, digital input and output scanners, track ball input devices; computer hardware in the nature of circuit boards provided with integrated circuits, computer expansion boards, computer interface boards; and voltage and power distribution and protection systems composed of breakers and switchgear, namely, electrical fuses, electrical current switches, electrical connection boxes, electric fuse boxes, circuit breakers, electric switches, electrical connection boxes, electric fuse boxes, switch boxes, and relays and modules for overvoltage protection, namely, static voltage regulators, voltage surge suppressors, voltage surge protectors, voltage regulators for electric power, electric voltage transformers” in International Class 009.

 

Standard of Law

 

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.

 

Comparison of the Marks

 

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 applied-for mark and the cited registrations are similar in appearance, sound, connotation and commercial impression. There are differences between the marks, however, the differences are outweighed by their similarities.

 

The applied-for mark and cited registration 3485253 possess literal elements in addition to design elements. However, the literal element is the more dominant feature of the mark. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although 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)). Consumers will utilize the literal element when requesting and referencing the goods of the applicant and the registrant. Thus, the literal element will be more impressed upon the memory of the consumer.

 

Additionally, the applied-for mark and the cited registrations share the term, “STEADY,” as a result the marks are confusingly similar.

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). The applied-for mark and the cited registrations all sharing the term “STEADY” creates the connotation and commercial impression of being firm in position or not easily disturbed.

 

The cited registrations possess the additional term “TEC,” this descriptive term does not assist consumers in identifying the source of the goods and renders “STEADY” the more dominant portion of the mark.

 

Thus, the marks when considered in their entireties are sufficiently similar in appearance, sound, connotation and commercial impression to cause confusion or mistake as to the source of the goods.

 

Comparison of the Goods

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods “batteries,” “battery chargers,” “electric cables,” “electric wires”, and “voltage stabilizing power supplies” in the application and registrations are identical.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

 

Accordingly, the use of marks “STEADY” (plus design), “STEADYTEC” (plus design) and “STEADYTEC,” all possessing the term “STEADY” by different parties in connection with the identified goods is likely to lead to consumer confusion or mistake as to the source of the goods. Therefore, registration is refused under Section 2(d) of the Act.

 

 

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87568922 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

 

RESPONSE GUIDELINES

 

For this application to proceed further, 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.  In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.22(b)(1), (c).  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

 

/Keisha M. Hardley/

Examining Attorney

Law Office 112

571-272-6945

Keisha.Hardley@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/2/2019 FOR U.S. APPLICATION SERIAL NO. 88259192

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/2/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Keisha M. Hardley/

Examining Attorney

Law Office 112

571-272-6945

Keisha.Hardley@uspto.gov

 

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.