United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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
This Office
action is in response to applicant’s communication filed on June 16, 2020.
Applicant’s provision of fact sheets relating to the goods are noted, and the requirement for information regarding the nature of the goods is satisfied.
SUMMARY OF ISSUES:
- Further Clarification of Identification of Goods Required
- Section 2(d) Likelihood of Confusion Refusal Continued
The amendment to the identification of goods has been received, but requires further clarification to be acceptable. The requirement for an acceptable identification of goods is
continued and modified as indicated below.
Applicant’s arguments regarding the Section 2(d) likelihood of confusion refusal have been considered, but are unpersuasive for the reasons specified below. The Section 2(d)
refusal in view of Registration Nos. 935243, 1841649, 2932497, 3035447, and 3427777 and potentially in view of prior-filed conflicting application Serial No. 87/867723, is continued and
maintained.
Further Clarification of Identification of Goods Required
The amended wording “Computing systems used in cooling immersion environments for high speed computing
comprised of data centers with modular servers and enclosures for same” in the identification of goods is indefinite and must be clarified because it is not clear whether the phrase “high speed
computing” refers to the environments or to the systems. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate: “Computing systems, comprised of data
centers with modular servers and enclosures, for use in high speed computing in cooling immersion environments.”
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those
originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06.
Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods
and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP
§1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary
meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or
services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please
see the USPTO’s online searchable U.S. Acceptable
Identification of Goods and Services Manual. See TMEP §1402.04.
Section 2(d) Refusal Continued and Maintained
Applicant argues that the differences in the goods are such that confusion as to source is unlikely. The examining attorney respectfully
disagrees.
Applicant’s goods are presently identified as “computing systems used in cooling immersion environments for high speed computing comprised of data centers with modular servers
and enclosures for same.”
Registrant’s goods include electronic instrumentation such as electrical switches, electrical terminals, actuators, electrical relays, electrical connectors, computer cables,
etc. All of these items could be used as components of data centers with modular servers. The goods in the pending prior-filed
conflicting application are cases specially adapted for electronic equipment, namely, electronic components in the nature of mother/daughter boards with the purpose of acting as a smart-sensing
module for individual and companies’ critical assets; communication hubs to work as IoT devices; electric equipment cases. Applicant’s goods and the goods in the
cited registrations and pending application are sufficiently related in nature that consumers are likely to perceive them as emanating from the same source, particularly in view of the nearly
identical or identical marks used in connection with them.
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, servers and switches, 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).
The compared goods and/or services 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 and/or services] 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).
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 and/or services 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).
As for applicant’s arguments concerning the relative sophistication of its consumers, even
if consumers of the compared goods and/or services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion,
especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116
USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). The identity of the
marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116
USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990));
see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
Assistance
Please call or email the assigned trademark examining attorney with questions about this Office
action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or
requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application
record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Jeri Fickes
/Jeri Fickes/
Trademark Examining Attorney
Law Office 107, USPTO
571/272-9157
jeri.fickes@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.
