UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88266636
MARK: GE SONGZHE
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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: LAN LI
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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.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGARD TO SPECIFIED GOODS
Applicant’s mark is GE SONGZHE for “Chargers for electric batteries; Computer peripheral devices; Headphones; Headsets for mobile telephones; Sound transmitting apparatus; Surveying instruments; Theft alarms; Wires, electric; Downloadable computer software for pulmonary, cardiovascular and edema analysis for use in small animal research studies; Electric navigational instruments.” in International Class 9.
International Class 9: “Chargers for electric batteries; Computer peripheral devices; Headphones; Headsets for mobile telephones; Sound transmitting apparatus; Surveying instruments; Theft alarms; Wires, electric; Electric navigational instruments
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2804187, 2968024, 3363509 and 4176229. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The cited marks, all owned by the same registrant, are listed below:
Reg. No. |
MARK |
OWNER |
RELEVANT GOODS AND/OR SERVICES |
CLASS |
2804187 |
GE (stylized)
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GENERAL ELECTRIC COMPANY |
cordless headset telephones; digital messaging systems, televisions, television remote controls, VCR players; VCR remote controls; DVD players; DVD remote controls; combination TV and VCR sets; batteries; electrical goods, electrical power generation and distribution products and electrical voltage and overvoltage surge products, namely, electrical wires, cables, cords, and conductors, electrical wiring and fixtures |
9 |
2968024 |
GE (stylized) |
GENERAL ELECTRIC COMPANY |
Electrical devices and electrical power distribution products, namely, electric power supplies |
9 |
3363509 |
GE |
GENERAL ELECTRIC COMPANY |
Navigation apparatus for vehicles in the nature of on-board computers; global positioning system (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices for the rail and transit industries |
9 |
4176229 |
GE |
GENERAL ELECTRIC COMPANY |
Avionic sensor systems, namely, navigation systems; Electrical apparatus, namely, charging stations for charging electric vehicles |
9 |
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 the present case, the following factors are most relevant: similarity of the marks, relatedness of the goods, and similarity of the trade channels of the goods.
Comparison of the Marks
In the present case, applicant’s mark is confusingly similar with the registered marks because the marks share the wording GE. 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).
In Re: Reg. Nos. 3363509 and 4176229
In this case, the confusing similarity between the marks is not diminished even though the applied-for mark is stylized with design elements and the registered marks here are in standard characters. A mark in typed or standard characters, as the registered marks are here, may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element, as the applied-for mark is here, generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In Re: Reg. Nos. 2804187 and 2968024
The trademark examining attorney also will note that the likelihood of confusion is not obviated in this case even though the applied-for mark and the registered marks are stylized with design elements. 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)).
Accordingly, applicant’s mark and the registered marks are confusingly similar.
Relatedness of the Goods
Applicant’s mark is GE SONGZHE for, in relevant part, “chargers for electric batteries; computer peripheral devices; headphones; headsets for mobile telephones; sound transmitting apparatus; surveying instruments; theft alarms; wires, electric; electric navigational instruments” in International Class 9.
The cited marks are listed below:
Reg. No. |
MARK |
OWNER |
RELEVANT GOODS AND/OR SERVICES |
CLASS |
2804187 |
GE (stylized)
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GENERAL ELECTRIC COMPANY |
cordless headset telephones; televisions, television remote controls, VCR players; VCR remote controls; DVD players; DVD remote controls; combination TV and VCR sets; batteries; electrical goods, electrical power generation and distribution products and electrical voltage and overvoltage surge products, namely, electrical wires, cables, cords, and conductors, electrical wiring and fixtures |
9 |
2968024 |
GE (stylized) |
GENERAL ELECTRIC COMPANY |
Electrical devices and electrical power distribution products, namely, electric power supplies |
9 |
3363509 |
GE |
GENERAL ELECTRIC COMPANY |
Navigation apparatus for vehicles in the nature of on-board computers; global positioning system (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices for the rail and transit industries |
9 |
4176229 |
GE |
GENERAL ELECTRIC COMPANY |
Avionic sensor systems, namely, navigation systems; Electrical apparatus, namely, charging stations for charging electric vehicles |
9 |
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Moreover, determining likelihood of confusion is based on the description of the goods and/or 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 Re: Reg. Nos. 3363509 and 4176229
In this case, the application uses broad wording “electric navigational instruments” which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “navigation apparatus for vehicles in the nature of on-board computers” and “global positioning system (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices for the rail and transit industries” in Reg. No. 3363509 and the “avionic sensor systems, namely, navigation systems” in Reg. No. 4176229. 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). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
In Re. Reg. No. 4176229
Likewise, applicant’s use of the broad wording “chargers for electric batteries” presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “electrical apparatus, namely, charging stations for charging electric vehicles”.
In Re: Reg. No. 2804187
Additionally, applicant’s use of the broad wording “wires, electric” presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “electrical goods, electrical power generation and distribution products and electrical voltage and overvoltage surge products, namely, electrical wires, cables, cords and electrical wiring and fixtures”.
Because the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers, they are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods here are related.
In Re: Reg. Nos. 2804187 and 2968024
Further, applicant’s “computer peripheral devices; headphones; headsets for mobile telephones; sound transmitting apparatus; surveying instruments; theft alarms” in International Class 9 are commercially related to registrant’s “cordless headset telephones; televisions, television remote controls, VCR players; VCR remote controls; DVD players; DVD remote controls; combination TV and VCR sets; batteries” in Reg. No. 2804187 and the “electrical devices and electrical power distribution products, namely, electric power supplies” in Reg. No. 2968024, because the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods emanate from the same source. As the attached Internet evidence from the third-party websites for Sony, Naxa Electronics, Panasonic, Google and Samsung demonstrates, applicant’s and registrant’s goods commonly are provided under the same mark, through the same trade channels and are used by the same classes of consumers in the same fields of use. See:
Additionally, the trademark examining attorney has 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 registrants in this case. See Reg. Nos. 2887626, 4061400, 5105570, 5480133, 5596458, 5607817, 5670414 and 5717105. This evidence shows that the goods listed therein 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).
Accordingly applicant’s and registrant’s goods are sufficiently related.
Conclusion
Since applicant’s mark and the registered mark are confusingly similar and their goods are sufficiently related, registration of applicant’s mark must be refused under Trademark Act Section 2(d) with regard to the goods specified.
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL – SPECIMEN DOES NOT SHOW MARK IN USE IN COMMERCE
Registration is refused because the specimen in International Class 9 is unreadable or illegible, and thus does not clearly show the applied-for mark in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
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 refusals, applicant must also respond to the requirements set forth below.
REQUIREMENT TO AMEND DESCRIPTION OF THE MARK
The following description is suggested, if accurate: The mark consists of the stylized wording “GE” in a circle to the left of the stylized wording “SONGZHE”.
Applicant should note the following additional requirement.
REQUEST FOR INFORMATION – INFORMATION ABOUT WORDING IN THE MARK REQUIRED
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.
SUGGEST HIRING U.S. TRADEMARK COUNSEL
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.
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.
/Oreoluwa Alao/
Oreoluwa Alao
Examining Attorney
Law Office 108
(571)270-7210
oreoluwa.alao@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.