| To: | Trident Rfid Pty Ltd (orders@trademarkraft.com) |
| Subject: | U.S. Trademark Application Serial No. 88298906 - TRIDENT - TRIDE-005 |
| Sent: | July 10, 2020 09:22:46 PM |
| Sent As: | ecom124@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 |
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. 88298906
Mark: TRIDENT
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Correspondence Address: 16950 Via de Santa Fe Suite 5060-107
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Applicant: Trident Rfid Pty Ltd
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Reference/Docket No. TRIDE-005
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 10, 2020
On June 10, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88234451. In addition, applicant was required to provide a copy of the foreign registration from applicant’s country of origin. The referenced prior-pending application has since registered, and applicant has submitted a copy of the foreign registration. Therefore, examination is now resumed, and registration is refused as follows.
In a prior Office action dated May 8, 2019, registration was refused under Trademark Act Section 2(d) for a likelihood of confusion with the marks in U.S. Registration Nos. 5614255, 4737635, 4737634, 4737633, 3940661, 4181916, 4206077, 4541647, 3834594, 3758685, and 2534115, as to the applied-for goods or services specified in the Office action. The refusal was thereafter maintained and continued in the Suspension Notice dated June 10, 2019, and it is maintained and continued herein.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – NEW REFUSAL – PARTIAL REFUSAL AS TO CLASS 014
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Applicant has applied to register:
The registered mark is:
SIMILARITY OF THE MARKS
In the present case, the wording in applicant’s mark is TRIDENT and registrant’s mark is TRIDENT. The terms 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). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
While the applied-for mark is stylized, the stylization does not change the meaning or commercial impression the wording therein – it reinforces it with the incorporation of the “I” stylized into a trident-like design. Further, the registered mark is in standard character. A mark in typed or standard characters 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 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”).
Therefore, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
In this case, the goods in the application and registration are identical as to “watches” and the goods identified as “timepieces” and “chronometric instruments” in the application encompass goods of the type identified in the registration, namely, “wristwatches”. Similarly, “watches” in the registration encompasses goods identified in the applications, namely, “apparatus for timing sports events.” Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 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.
In this case, applicant's and registrant's marks are identical, yielding confusingly similar marks in terms of sound, appearance and commercial impression. The use of confusingly similar marks in conjunction with legally identical or highly related chronometric instruments combines to create a substantial likelihood that consumers will be confused as to the source of the goods. Therefore, registration is refused under Section 2(d) of the Trademark Act.
GOODS AND SERVICES IN U.S. APPLICATION EXCEED SCOPE OF FOREIGN REGISTRATION
In this case, the U.S. application identifies the particular goods and/or services as follows:
International Class 009: Electronic animal identification apparatus; Electronic cables; Electronic circuit board; Electronic circuit cards; Electronic coding units; Electronic computers; Electronic data loggers; Electronic data processing apparatus; Electronic data recorders; Electronic desk calculators; Electronic disc title printers; Electronic encryption units; Electronic indicator boards; Electronic indicator panels; Electronic integrated circuits; Electronic memories; Electronic metering faucets; Electronic motion sensitive switches; Electronic scoreboards; Electronic semi-conductors; Electronic servo motor controllers; Electronic speed controllers; Electronic warning bells; Recording and playing devices for sound and image carriers; Time lapse digital cameras for viewing plant growth; Time lapse image recorder; Apparatus for recording, transmission and reproduction of images; Apparatus for recording, transmission or reproduction of sound; Apparatus for recording, transmission or reproduction of sound and images; Apparatus for recording, transmitting and reproducing sound and images; Apparatus for broadcasting, recording, transmission or reproduction of sound or images; Apparatus for the recording, transmission and reproduction of sound and images; Connectors for electronic circuits; Downloadable electronic game programs; Downloadable computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Driver impairment detection device in the nature of a fingerprint recognition scanner that activates a timing mechanism to determine the driver's fitness to drive the vehicle; Luminous variable/dynamic signs using light emitting diodes and electronic controllers to produce real-time and programmable messages and information displays; Pocket translators, electronic; Pocket-sized electronic calculators; Sound recording apparatus; Sound and picture recording apparatus
International Class 041: Timing of sports events; Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races; Booking of seats for shows and sports events; Educational and entertainment services, namely, conducting programs featuring recreational activities, literacy training, art events, and sporting events for children in foster care; Entertainment services, namely, performing and competing in motor sports events; Handicapping for sporting events; On-line admission ticket agency services for entertainment, educational, sporting and cultural events; Organisation of sports events in the field of football; Organizing sporting events, namely, triathlons; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Organizing and conducting college sport competitions and athletic events; Organizing community sporting and cultural events; Providing a web site through which golfers reserve tee times at golf courses; Providing collegiate athletic and sporting events; Providing information relating to sports and sporting events; Providing information to golfers concerning reservation of tee times and rates at golf courses via e-mail; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programmes; Rental of indoor recreational facilities for playing sports, sports training, and group recreation events; Ticket agency services for sporting events; Ticket reservation and booking services for entertainment, sporting and cultural events
However, the foreign registration identifies the following goods and/or services:
International Class 009: After idling timers; Audio timers; Automatic controllers and timers for irrigation and sprinkler watering systems; Automatic time switches; Automatic timers for use with beverage makers; Automatic timers for use with cooking appliances; Automatic timers for use with kettles; Chronographs (time recording apparatus); Computer timetables; Control apparatus (time clocks); Countdown timers; Darkroom timers; Egg timers (sandglasses); Electric time-relay devices; Electric timers; Electrical switch timers; Electrical time switches; Electrical timetables; Electronic time recording apparatus; Electronic timers; Electronic timers for lubricating installations; Electronic timetables; Indicators for indicating time; Instruments for measuring radiation exposure time; Programmable timers; Real-time data processing apparatus; Sensors for real time data input apparatus; Sensors for real time data output apparatus; Start timers for burners; Time base correctors; Time cards (encoded); Time cards (machine readable); Time cards (magnetic); Time cards (punched); Time clocks (time recording devices); Time clocks (time recording); Time coding apparatus; Time controlled feeding devices for aquatic animals; Time correction filters; Time data generators; Time delay generators; Time delay units; Time dividers for digital communication apparatus; Time division multiplexers; Time lapse video cassette recorders; Time programmers; Time recording apparatus; Time recording instruments; Time registering apparatus; Time regulating apparatus; Time switches, automatic; Time-code generators; Timers (control devices); Timers for automatic apparatus; Timers for switching on electrical devices at pre-programmed times; Electric timing devices; Antenna timing units; Timing devices for controlling machines; Timing devices for industrial processing apparatus; Electronic timing apparatus; Timing apparatus; Automatic timing switches; Electronic timing control instruments; Electronic timing control apparatus; Printed circuits for use with timing mechanisms; Sensors for measuring speed; High speed data transmission apparatus; Timing (measuring) devices; Antennas; Readers (data processing equipment)
These goods and/or services in the U.S. application exceed the scope of the goods and/or services in the foreign registration because (1) the foreign registration does not contain any services, and thus all of the services in International Class 041 would exceed the scope of the foreign registration; (2) the listed Class 009 goods exceed the scope of the goods specified in the foreign registration, as either broadly identified apparatus, goods which do not obviously appear to correlate with or overlap with the timing apparatus or devices identified in the foreign registration; or (3) the goods listed in the foreign registration contain a specification that differs from that specified in the application (e.g., the foreign registration identifies “time lapse video cassette recorders,” but the application is more broad as to “time lapse image recorder” and “time lapse digital cameras.”
Thus, these goods and/or services in the U.S. application are not acceptable and particularly with respect to the Class 041 services, may not be amended to correspond with the services in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
If applicant amends the identification of goods, it may only amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original United States application and as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION - MAINTAINED AND CONTINUED REFUSALS
The refusals to register because of a likelihood of confusion with the specified marks are maintained and continued:
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Copies of each referenced registration are attached to the May 8, 2019, Office action, and incorporate by reference herein.
Applicant's arguments against the Section 2(d) refusals are noted and have been made a part of the record. After careful consideration of applicant's arguments, the trademark examining attorney finds such arguments unpersuasive, and finds that there is a likelihood of confusion between the applicant's mark and the marks in the cited registrations, U.S. Registration Nos. 5614255, 4737635, 4737634, 4737633, 3940661, 4181916, 4206077, 4541647, 3834594, 3758685, and 2534115, as to the applied-for goods or services specifically cited.
Specifically, applicant’s argument regarding similarity of the marks relies wholly on a side-by-side analysis of the marks. 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., 901 F.3d 1367, 1373, 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); TMEP §1207.01(b).
Likewise, applicant argues distinctions in the appearance between its stylized mark and marks in standard character. However, a mark in typed or standard characters 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 like applicant’s presented in stylized characters with a small design element 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”).
Finally, applicant’s arguments which argue artificial limitations on services are found legally unpersuasive. When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services 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)). The USPTO has “no authority to read any restrictions or limitations into the registrant’s description of [good and/or services].” In re Thor Tech Inc., 90 USPQ2d at 1638. Nor may an applicant restrict the scope of the goods and/or services covered in the cited registration by argument or extrinsic evidence. In re Midwest Gaming& Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Accordingly, the Section 2(d) refusals are maintained and continued.
RESPONSE GUIDELINES
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/Christina M. Riepel/
Trademark Examining Attorney
Law Office 124
(571) 272-6358
christina.riepel@uspto.gov
RESPONSE GUIDANCE
