Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  November 20, 2019

 

 

This suspension notice is in response to applicant’s communication filed on November 13, 2019.  In the previous Office action, the Examining Attorney issued/maintained the following refusal and requirements:

 

Section 2(d) Refusal – Likelihood of Confusion

Requirement for Acceptable Identification of Goods and Services

Requirement for Additional Information

Requirement for Copy of Foreign Registration

 

The applicant’s response satisfies the identification requirement.  The applicant has provided a response to the Section 2(d) refusal and information requirement.  However, as discussed further below, this refusal and requirement are maintained and continued.

 

The applicant has also indicated that its foreign registration has not yet issued.

 

Accordingly, the application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Application suspended until submission of foreign registration.  Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

Refusal and requirements maintained and continued.  The following refusal and requirements are maintained and continued: 

 

• Section 2(d) Refusal - Likelihood of Confusion
• Requirement for Additional Information
• Requirement for Copy of Foreign Registration

 

See TMEP §713.02.  These refusals and requirements will be made final, if appropriate, once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Information Requirement

 

The applicant has responded to the information requirement by indicating that its “non-downloadable software” is sold “embodied within the electronic control unit for automobile engines,” and that this software will be “[u]pdate[d] . . . through cloud services or OTA (On-the-Air) updates).”  Applicant’s Response, 11/13/2019, TSDR, at 36.  This response does not describe any non-downloadable software in Class 42.  The initial software is sold installed on the ECU, and the updates involve transferring the software to the ECU.  Although these updates will be pushed to the ECU (rather than pulled to the ECU in a traditional download process), the software will operate on the ECU and will not be accessed through the cloud services when it is used.  Accordingly, this requirement is maintained and continued.

 

Section 2(d) Refusal – Likelihood of Confusion

 

The applicant has argued that the marks have different meanings because J in the applicant’s mark refers to Japan, whereas the term JQUAD in the registered mark refers to the application signatory, Jordan Quade.  Applicant’s Response, 11/13/2019, TSDR, at 37.  The applicant has also argued that the term QUAD is diluted in the automotive industry.  Applicant’s Response, 11/13/2019, TSDR, at 36-38.  However, the marks do not just share the term QUAD; the marks share the virtually identical term JQUAD/J-QUAD.  The applicant has not provided any evidence of dilution of this composite term in the automobile industry.  Additionally, the purported evidence of dilution of QUAD consists of two registrations, and associated website evidence, for the marks QUAD and QUAD-RING owned by the same entity for sealing rings, and other seals.  Applicant’s Response, 11/13/2019, TSDR, at 2-35, 38.

 

The applicant has argued that its goods would not be sold through an online retail store like the registrant’s services.  Applicant’s Response, 11/13/2019, TSDR, at 37.  However, the identification does not include any trade channel limitations and the applicant was previously provided evidence of software sold through on-line retail store services.  Notably, the applicant discusses the Office’s burden to provide evidence of relatedness, Applicant’s Response, 11/13/2019, TSDR, at 37, but does not discuss any of the evidence made of record in support of this burden.

 

The applicant’s response quotes from In re Ferrero, 479 F.2d 1395, 178 USPQ 167 (CCPA, 1973), quoted at Applicant’s Response, 11/13/2019, TSDR, at 38, in which the court reversed the affirmance of a Section 2(d) refusal by the Trademark Trial and Appeal Board, which was based on the Board’s reasoning that “‘TIC TAC’ [the applicant’s mark] may well call to mind the well known game ‘tick tack toe’, of which the mark of the registration is the phonetic equivalent.”  However, the applicant’s mark in this case was not refused because it “called to mind” anything analogous to the game referenced in the cited case, and the registered mark does not appear to be based on anything analogous to the “tick tack toe” game discussed in the cited case. 

 

The applicant has also argued that the registrant only offers a “limited extent of automotive related goods,” and has provided negative search results from the registrant’s website for “software” and “ecu.” Applicant’s Response, 11/13/2019, TSDR, at 38, 40-45.  However, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue; it may not be restricted by 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)). 

 

The applicant has also asserted that the purchasers of its goods are sophisticated purchasers.  Applicant’s Response, 11/13/2019, TSDR, at 37-38.  The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). 

 

Additionally, the applicant has not argued that consumers for retail store services featuring tools and automotive parts are limited to sophisticated purchasers.  Where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods and services is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).

 

Accordingly, the Section 2(d) Refusal is maintained and continued.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@uspto.gov

 

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 20, 2019 for

U.S. Trademark Application Serial No. 88303184

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

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

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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).

 

 

 

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.”