Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) 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:  September 10, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on August 3, 2019.

 

In a previous Office action(s) dated May 23, 2019, the trademark examining attorney raised the following refusals for the applied-for mark: 

 

·       TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARK

·       TRADEMARK ACT SECTION 2(e)(1) REFUSAL – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

·       REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW APPLIED-FOR MARK IN USE IN COMMERCE

 

In addition, applicant was required to satisfy the following requirement: 

 

·       REQUEST FOR INFORMATION

 

Based on applicant’s response, the trademark examining attorney notes that the following refusal has been obviated:

 

• TRADEMARK ACT SECTION 2(e)(1) REFUSAL – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

 

See TMEP §§713.02, 714.04. 

 

In addition, the following requirement has been withdrawn: 

 

• REQUEST FOR INFORMATION

 

See TMEP §§713.02, 714.04 or See id.

 

The evidence attached to the May 23, 2019 Office Action is hereby incorporated by reference.

 

Applicant has not presented an arguments or evidence in support of registration.

 

The trademark examining attorney maintains and now makes FINAL the refusals.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARK
• REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW APPLIED-FOR MARK IN USE IN COMMERCE

 

TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARK

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1845348 (ULTRALITE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

                                    

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 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.  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

 

Applicant’s mark is ULTRALITE in standard character form.

 

Registrant’s mark is ULTRALITE in typed form.

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is ULTRALITE and registrant’s mark is ULTRALITE.  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.  Id.

 

Thus, the marks are confusingly similar.

 

Comparison of Goods

 

The goods are related.

 

Applicant's goods are as follows:

 

INTERNATIONAL CLASS 007: Cutting machines; Cutting machines for metalworking; Plasma etching machines; Electric plasma cutters; Plasma cutting machines

 

Registrant's goods are as follows:

 

INTERNATIONAL CLASS 007: hand pneumatic tools; namely, rivet hammers, air drills, nut plate drill motors and compression riveters

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant's and registrant's goods are related because tool manufacturers manufacture make pneumatic hand tools and cutting machines.  The attached Internet evidence, consisting of screen shots from the websites of tool manufacturers, establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods 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).

 

Please see evidence from:

·        CHICAGO PNEUMATIC® (http://www.cp.com/en-us), offering:

o   RIVET HAMMERS: http://www.cp.com/en-us/tools/products/percussivetools/rivet-hammers/cp4282

o   AIR DRILL: http://www.cp.com/en-us/tools/products/drills/cp1117p05

o   COMPRESSION RIVETERS: http://www.cp.com/en-us/tools/products/compression-tools/cp4210al

o   CUTTING MACHINES: http://www.cp.com/en-us/tools/products/specialtycutting/cp874

·        DEWALT® (http://www.dewalt.com/), offering:

o   AIR DRILL: http://www.dewalt.com/products/power-tools/air-tools/38-reversible-drill/dwmt70786l

o   RIVET HAMMER: http://www.dewalt.com/products/power-tools/air-tools/chisel-hammer/dwmt70785

o   CUTTING MACHINES: http://www.dewalt.com/products/power-tools/saws/table-saws/10-in-table-saw-with-scissor-stand/dwe7491x

·        INGERSOLL RAND® (http://www.ingersollrandproducts.com/en-us.html), offering:

o   RIVET HAMMERS: http://www.ingersollrandproducts.com/en-us/power-tools/products/air-hammers/132-super-duty.html

o   AIR DRILL: http://www.ingersollrandproducts.com/en-us/power-tools/products/drilling-tools/1-2-air.html

o   CUTTING MACHINES: http://www.ingersollrandproducts.com/en-us/power-tools/products/air-cutting-tools/12v-recip-saw.html

 

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 registrant in this case.  This evidence shows that the goods listed therein, namely cutting machines and pneumatic hand tools, 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).

 

 

 

To the extent the evidence may not address all of the goods in applicant’s identification, relatedness does not have to be established for every good in an identification.  It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some goods encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).  In this case, relatedness has been established for many of the identified goods, which is enough to show a likelihood of confusion.

 

Conclusion

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Thus, upon encountering the marks ULTRALITE and ULTRALITE as used on the identified goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Therefore, applicant’s mark is not entitled to registration because of a likelihood of confusion with the mark in U.S. Registration No. 1845348 (ULTRALITE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

 

REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW APPLIED-FOR MARK IN USE IN COMMERCE

 

Applicant was previously refused registration in International Class 7 because the applied-for mark did not appear in the specimen.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, did not submit any substitute specimens. Thus, the refusal to register the applied-for mark in International Class 7 is now made final because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i). 

 

Registration is refused because the applied-for mark does not appear anywhere on the specimen for International Class 7 and thus fails to show the applied-for mark in use in commerce for each international class.  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(f)(i), (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 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). 

 

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) shows the applied-for mark in 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 fees 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.

 

HOW TO SUBMIT A VERIFIED SUBSTITUTE SPECIMEN

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted:  (2) check the box next to the following statement:  “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

 

 

ADVISORY: AMENDMENT TO SUPPLEMENTAL REGISTER ACCEPTED

 

Applicant’s amendment to the Supplemental Register is accepted and the refusal based on Trademark Act Section 2(e)(1) is now obviated.  See 15 U.S.C. §1091; TMEP §714.05(a)(i).  However, if applicant subsequently amends to Trademark Act Section 1(b) to respond to the specimen refusal that the specimen fails establish to use of the mark in commerce, applicant will be required to withdraw the amendment to the Supplemental Register and the original refusal will be reinstated.  TMEP §714.05(a)(i).  A mark in an intent-to-use application is not eligible for registration on the Supplemental Register until an acceptable allegation of use has been filed.  37 C.F.R. §2.47(d); TMEP §815.02.

Furthermore, if applicant withdraws its amendment to the Supplemental Register, then the requirement regarding the request for information will be reinstated.

 

 

RESPONSE OPTIONS

 

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.  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)

 

 

ASSISTANCE

 

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 refusals 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. 

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 10, 2019 for

U.S. Trademark Application Serial No. 88305584

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 10, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

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.”