UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.

 

 

ISSUE/MAILING DATE: 5/20/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Prior-Filed Pending Applications
• Section 2(d) Likelihood of Confusion Refusal - Partial
• Amendment to the Identification of Goods and/or Services Required
• Multiple-Class Application Requirements

 

PRIOR-FILED CONFLICTING APPLICATIONS

The filing dates of pending U.S. Application Serial Nos. 87575247 and 85648143 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL

Applicant should note that the following refusal pertains only to those goods identified as “electric sensors” and services in International Class 42 as outlined below.

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4774607, 2183319, 1655254, 1655253, 1592870, 1592779, 0613509, and 5739926.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant has applied for the standard character mark having the literal element “ETA CENTER” for relevant goods identified as “electric sensors” and services recited as “Computer project management services; computer services, namely, managing websites for others; installation of computer software; monitoring the computer systems of others and providing back-up computer systems and facilities; computer services, namely, data recovery services; data warehousing; remote monitoring of computer systems to provide automatically triggered real-time back-up services; co-location services, namely, leasing of facilities for computers; on-site monitoring of computer systems; monitoring security systems to limit access to computer networks and websites; technical support services, namely, troubleshooting of computer software and hardware problems via the Internet, telephone, email, and in person; Computer services, namely, cloud hosting and hybrid cloud hosting provider services; technical support services, namely, monitoring and managing technical functions of co-location and cloud computing systems; providing temporary use of on-line, non-downloadable cloud computing software for use in electronic storage of data.”

 

The registrant’s marks are as follows: 

 

Mark	Registration No.	Relevant Goods/Services
ETA	1592779	“electrical and electronic switch, protection, control and measuring devices, namely thermal, thermal magnetic, high performance, purely magnetic and magnetic-hydraulic circuit breakers, thermal time delay relays, battery main switches with thermal protection; integrated circuits and thick film hybrid circuits; ground fault circuit breakers; flow measuring devices; namely, flow meters, flow switches and flow monitors; electrical, electronic and thermal locking and delocking devices, namely electronic current monitors, electronic voltage monitors, electronic flow monitors, electronic level sensors, thermal door locking devices, digital measuring instruments for current, voltage, pressure, temperature and frequency; electronic time delay relays; electrical and electronic circuit breakers for land vehicles, airplanes and boats”
ETA	1649305	“electrical and electronic monitoring devices, namely, [ free-programmable microprocessor controllers, ] customer designed integrated circuits”
ETA	1655253	“circuit breakers”
E-T-A	1655254	“circuit breakers”
E-T-A (stylized form)	0613509	“electric circuit current overload release switches and relays, [ electric circuit fuses, ] manual and automatically controlled electric switches and relays, [ telephone and telegraph transmission and receiving equipment, ] remote control and remotely controlled electric switches and relays, [ light sensitive and photo-electric switches, ] switch boxes [, plugs, ] [ and electric wires, conductors and conduits ] [ and additional relays for vehicles ]”
E-T-A (stylized form)	1592780	“electrical and electronic switch, protection, control and measuring devices, namely thermal, thermal magnetic, high performance, purely magnetic and magnetic-hydraulic circuit breakers, thermal time delay relays, battery main switches with thermal protection; integrated circuits and thickfilm hybrid circuits; ground fault circuit breakers; flow measuring devices, namely, flow meters, flow switches and flow monitors; electrical, electronic and thermal locking and delocking devices, namely electronic current monitors, electronic voltage monitors, electronic flow monitors, electronic level sensors, thermal doorlocking devices, digital measuring instruments for current, voltage, pressure, temperature and frequency; electronic time delay relays; electrical and electronic circuit breakers for land vehicles, airplanes and boats”
E-T-A (stylized form)	1649306	“[ micro-computer controllers; ] electrical and electronic monitoring devices, namely, [ free-programmable micro processor controllers, ] customer designed integrated circuits [ , customer designed thickfilm hybrid circuits ].”
E-T-A (design mark)	2183319	“electrical and electronic switch, protection, control and measuring devices, namely, all kinds of circuit breakers, electrical and electronic switches, battery switches, integrated circuits and thick film hybrid circuits, door locking relays, time delay relays, overload relays; protective electronic locks for use with land vehicles, aircraft and water craft and parts thereof; data processors and computers and parts thereof; electrical and electronic monitoring devices, namely, current monitors, current surge protectors for low voltage, voltage monitors; digital panel meters, level sensors, digital panel instruments which display and monitor electric current, electric voltage and/or temperature, velocity sensors, pressure sensors, current surge protectors, remote power controllers; thermal circuit breakers; thermal-magnetic and magnetic overcurrent circuit breakers; flow measuring devices for gaseous, liquid and solid, media, namely, flow meters, flow monitors, monitoring heads for flow meters and flow transmitters for monitoring the flow rate and/or temperature”
E-T-A (design mark)	4774607	“Scientific, nautical, surveying, measuring, signalling, supervisory apparatus and instruments, namely, intelligent bus systems comprised of power modules, electrical circuit breakers, cables, converter connector cables, voltage supply, software, and touch panels based on CAN-Technology and Multiplexing technique for the protection and control of electrical installations in recreational and work boats and vehicles, electrical protection devices, namely, electronic and mechanical protection relays and switchgears for electrically measurable physical dimensions like current, voltage, temperature, frequency, pressure, resistance, power, energy; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electronic circuits, microcircuits, circuit boards, circuit breakers, miniature circuit breaker (MCBs), residual current circuit breakers (RCDs), residual current operated circuit breakers with overcurrent protection (RCBOs), molded-case circuit breakers (MCCBs), remote-controlled circuit breakers, arc fault detection and protection devices for AC and DC distribution and generation networks, namely, arc fault circuit breakers (AFCBs), arc fault circuit interrupters (AFCIs), arc fault monitors (AFMs) and related technologies in the nature of arc fault sensors and integrated circuits incorporating arc fault detection algorithms for installation in conventional and renewable energy grids operated by AC or DC including smart grid applications; data processing apparatus, computers; computer software for configurating, programming and controlling power distribution systems based on CAN-Technology and Multiplexing technique; computer software for preventing fires by arc fault detection in photovoltaic systems, electric and hybrid vehicles, aircraft on-board electrical systems, and in data processing centers; software for overcurrent and shortcircuit detection in automatic circuit breakers, smart power relays. electrical and electronic apparatus and instruments and parts thereof, in particular circuit breakers for equipment protection, flow-rate meters and current monitors, and electric sensors; electrical and electronic switching, protecting, controlling and measuring devices, namely, electric cut-off switches, disconnectors in the nature of cut-out switches, voltage surge protectors, electric control panels, ohmmeters; electrically remote-controlled switching devices, namely, automatically operated switches, electrically remote-controlled manually operated switches, electrically remote-controlled rocker switches, electrically remote-controlled toggle switches, electrically remote-controlled push button switches, electrically remote-controlled circuit breakers; electric relays; electronic and mechanical switching relays as well as switching amplifiers; electronic, mechatronics-based overcurrent protection, namely, surge protectors, circuit breakers, automatic circuit breakers, electronic circuits; overcurrent circuit breakers; residual current circuit breakers; thermal, thermal-magnetic, magnetic and magnetic-hydraulic circuit breakers for equipment protection; electric circuit breakers and start-up power switches with thermal and electromagnetic triggering; electrical and electronic circuit breakers for land vehicles, aircraft and watercraft; electrical and electronic circuit breakers for motor vehicles, airplanes and ships; motor protection circuit breakers; power circuit breakers; electric overcurrent switches; automatic cut-out switches; high-frequency switches; overvoltage cut-out switches; temperature switches; electric flasher switches; remote controlled power switches; power disconnectors, namely, trip units for circuit breakers and cut-out switches; circuit fuses for motor vehicles, telephone and telegraph systems; devices and systems for the distribution of electrical energy, namely, power transformers, uninterruptible power supplies, electrical conductors for transformers, power distribution units; electric voltage regulators; BUS-controlled shipboard wiring systems, in particular consisting of electric circuit breakers, electric microcontrollers, modules for BUS-coupling. integrated circuits, integrated semiconductor circuits and thick film hybrid circuits; electrical and electronic monitoring equipment, namely, electrometers, digital and analog multimeters; current monitors; voltage monitors; flow measuring devices in the nature of flow meters for gaseous, liquid and solid media; electric voltmeters”
ETA	5739926	“Computer software consultation; Computer software design for others; Computer software design, computer programming, and maintenance of computer software; Computer software development; Design of home pages, computer software and web sites; Design, development and implementation of software; Installation of computer software; Maintenance of computer software; Software authoring; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Design and development of computer hardware and software”

 

All marks listed in the table above are owned by the same registrant.

 

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.

 

SIMILARITY OF THE MARKS

 

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). 

 

With respect to applicant’s mark, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). As further explained below, applicant is required to disclaim the term “CENTER” as it is merely descriptive of applicant’s goods and services. Thus, although applicant’s mark contains an additional literal element “CENTER,” the wording “ETA” is accorded greater weight in determining the commercial impression of the mark. Accordingly, the dominant element of applicant’s mark is the term “ETA.”

 

 

1. Registration Nos. 1592779, 1649305, 1655253, 5739926

 

Applicant’s mark is “ETA CENTER” in standard characters while registrants’ marks are “ETA” in standard characters.

 

In the present case, as indicated above, the dominant element of applicant’s mark and registrants’ marks is the language “ETA.”  Therefore, registrant’s marks and the dominant element of applicant’s mark 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 and/or services.  Id.

 

Furthermore, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part as applicant has merely added the term “CENTER” to registrant’s marks which neither obviates the similarities between the marks nor diminishes the likelihood of confusion.

 

Therefore, the marks are confusingly similar as the parties’ marks are identical save for the addition of a descriptive word to the end of applicant’s mark. 

 

2. Registration Nos. 1655254, 0613509, 1592780, 1649306, 2183319 and  4774607

 

Applicant’s mark is “ETA CENTER” in standard characters having a dominant element of “ETA” while the literal element of registrant’s marks is “E-T-A.”

 

With respect to Registration Nos. 0613509, 1592780, 1649306, 2183319 and 4774607, when evaluating a composite mark consisting of words and a design and/or stylization, 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)). Therefore, although the referenced registrations contain design elements and/or stylization, it is the literal elements of each of the marks which represent the dominant element thereof as consumers will utilize the word portion to refer to or request the goods.

 

In comparing the marks and giving greater weight to each mark’s dominant element, 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 that regard, the dominant element of applicant’s mark consists of the wording “ETA” and the dominant literal element of registrant’s mark consists of the same letters merely separated by dashes “E-T-A.” This slight difference does not diminish the similarities and overall similar commercial impressions of the marks as the dominant literal elements of the parties’ marks consist of the same three letters which only differ as to the inclusion of punctuation between each letter.

 

As both applicant’s and registrant’s marks are substantially similar in sound, appearance, meaning, and overall commercial impression, the marks are considered similar for likelihood of confusion purposes.

 

RELATEDNESS OF THE GOODS AND SERVICES

 

In addition to the marks being substantially similar, the goods and/or services in this comparison are also related, if not identical.

 

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).

 

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).

 

1. Registration Nos. 1592779, 1592780, 2183319 and 4774607

 

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 this case, not only are applicant’s and registrant’s goods a series of related electrical control and monitoring goods, but also the application uses broad wording to describe “electric sensors”, which presumably encompasses all goods of the type described, including registrant’s more narrow “electrical, electronic and thermal locking and delocking devices, namely […] electronic level sensors” for Registration Nos. 1592779 and 1592780, “electrical and electronic monitoring devices, namely, […] level sensors, […] velocity sensors, pressure sensors” for Registration No. 2183319, and “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, […] arc fault detection and protection devices for AC and DC distribution and generation networks, namely, arc fault circuit breakers (AFCBs), arc fault circuit interrupters (AFCIs), arc fault monitors (AFMs) and related technologies in the nature of arc fault sensors” and “electrical and electronic apparatus and instruments and parts thereof, in particular […] electric sensors” for Registration No. 4774607.   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)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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 and/or services are related.

 

2. Registration Nos. 1649305, 1655253, 1655254, and 1649306

 

As outlined in full above, applicant’s goods consist of electric sensors while registrant’s goods consist of a variety of electrical control and monitoring goods.

 

In that regard, different goods in the electrical, electronic, and/or electromechanical fields have been found to be related where the evidence shows that the goods would be marketed through the same channels of trade and/or sold to the same classes of purchasers.  See, e.g., Alliance Mfg. Co. v. ABH Diversified Prods., Inc., 226 USPQ 348 (TTAB 1985) (finding cycling-type furnace controllers and various home products, including garage door openers and remote controls for operating lights and appliances, to be related, where both parties’ goods were electrically powered/electronically operated, had similar energy conserving characteristics, and were sold for residential use); In re Globe-Union Inc., 189 USPQ 158, 159 (TTAB 1975) (finding resistor-capacitor components and ceramic condensers to be related, where such goods “would be sold in the same trade channels to the same classes of purchasers such as original equipment manufacture[r]s for incorporation in the same piece of electronic equipment or apparatus”); In re Dynaco, Inc., 189 USPQ 104, 105 (TTAB 1975) (finding two-channel stereophonic amplifiers, loudspeakers, and non-electronic devices for connecting amplifiers and speakers, on the one hand, and switching transistors, on the other, to be related because the goods would be “invariably sold to the same class of purchasers in such circumstances and conditions that if persons were to encounter them under the same or similar marks, they might well be induced to believe that they originate from a common source”); Nat'l Steel Constr. Co. v. Matsushita Elec. Indus. Co., 158 USPQ 464 (TTAB 1968) (finding electric washing machines and electric water heaters to be related, where such goods were sold through the same channels of trade to the same class of purchaser, where the purchase of one of the party’s goods could lead to the purchase of the other party’s goods, and where the evidence of record indicated that a single manufacturer might produce both electric washing machines and electric water heaters).

 

To that point, the attached Internet evidence, consisting of webpages from www.schneider-electric.us, www.eaton.com, and www.grainger.com, establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods and/or services 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). See the attached internet evidence demonstrating that entities commonly provide a variety of electrical control and monitoring devices such as circuit breakers, integrated circuits, and electric switches as well as electrical and environmental sensors from the same source and through the same channels of trade such that use of similar marks in connection therewith, as in the present case, would create a likelihood of confusion.

 

In that regard, as applicant’s and registrant’s electrical goods emanate from the same source and move through the same channels of trade, the parties’ respective goods are related for likelihood of confusion purposes.

 

3. Registration No. 5739926

 

Applicant’s and registrants’ services pertain to a variety of computer software and computer-related services.

 

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 this case, not only do the application and registration contain the identical services, “installation of computer software”, but also the registration uses broad wording to describe “Computer software consultation; Computer software design for others; Computer software design, computer programming, and maintenance of computer software; Computer software development; Design of home pages, computer software and web sites; Design, development and implementation of software; Installation of computer software; Maintenance of computer software; Software authoring; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Design and development of computer hardware and software,” which presumably encompasses all services of the type described, including applicant’s more narrow “computer services, namely, managing websites for others; […] monitoring the computer systems of others and providing back-up computer systems and facilities; computer services, namely, data recovery services; […] remote monitoring of computer systems to provide automatically triggered real-time back-up services; […] on-site monitoring of computer systems; monitoring security systems to limit access to computer networks and websites; technical support services, namely, troubleshooting of computer software and hardware problems via the Internet, telephone, email, and in person; […] technical support services, namely, monitoring and managing technical functions of co-location and cloud computing systems.  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 services 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)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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 and/or services are related.

 

Furthermore, the attached Internet evidence, consisting of webpages from www.agiloft.com, www.citrix.com, and www.ibm.com, establishes that the same entity commonly provides the relevant services and markets the services under the same mark.  Thus, applicant’s and registrant’s goods and/or services 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). See the attached internet evidence demonstrating that entities commonly offer a variety of computer-related services, provision of non-downloadable software, computer software, hardware, and webpage design and maintenance services as well as technical, data, and hosting services from the same source such that the use of similar marks, as in the present case, presents a likelihood of confusion.

 

Thus, applicant’s and registrant’s computer, data, and software services are related for likelihood of confusion purposes.

 

Accordingly upon encountering either applicant’s mark “ETA CENTER” or registrants’ marks “ETA” and “E-T-A” as used in connection with the parties goods and/or services, consumers are likely to be confused and mistakenly believe that the parties’ respective goods and services emanate from a single source. As such, applicant’s mark must be refused registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS AND/OR SERVICES

 

The following applies to only the entries identified below.

 

As further explained below, the wording used to describe many of the applied-for goods needs clarification because it is indefinite, overbroad, or contains vague wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, applicant should note the following issues:

 

• The wording “software system” is overly broad and must be amended to indicate whether such software systems are recorded goods offered in Class 9 or the provision of which is a software-related service classified in Class 42.
• The language “monitoring the computer systems of others and providing back-up computer systems and facilities” must be amended to further clarify the nature of the services being provided.
• The wording “remote monitoring of computer systems to provide automatically triggered real-time back-up services” must be amended to clarify the purpose for which such services are being provided.
• The language “co-location services, namely, leasing of facilities for computers; on-site monitoring of computer systems; monitoring security systems to limit access to computer networks and websites” is indefinite and must be amended to specify the nature of the services being provided.
• The wording “on-site monitoring of computer systems” must be amended to indicate the nature of the monitoring services.
• The language “monitoring security systems to limit access to computer networks and websites” must further specify the purpose of the monitoring services.
• The wording “technical support services, namely, troubleshooting of computer software and hardware problems via the Internet, telephone, email, and in person” must be amended to further clarify the nature of the services.
• The language “technical support services, namely, monitoring and managing technical functions of co-location and cloud computing systems” must be amended to further specify the nature of the technical support services.

 

Full Suggested Identifications

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.

 

Applicant may substitute the following wording if acceptable and accurate:

 

In Class 9:

 

“Computer hardware and recorded software system for remotely monitoring and analyzing environmental conditions and controlling devices and suggesting changes to the location of devices within a building, facility, grounds, or designated spatial area; electric sensors”

 

In Class 42:

 

“Computer project management services; computer services, namely, managing websites for others; installation of computer software; computer services, namely, monitoring the computer systems of others for {specify nature of monitoring services, e.g., to detect breakdowns, for detecting unauthorized access or data breach} and technical support, namely, providing back-up computer systems being computer programs and facilities; computer services, namely, data recovery services; data warehousing;  remote monitoring of computer systems to provide automatically triggered real-time back-up services to ensure proper functioning; Computer co-location services, namely, leasing of facilities for computers in the nature of providing facilities for the location of computer servers with the equipment of others; on-site monitoring of computer systems for {specify nature of monitoring services, e.g., to detect breakdowns, for detecting unauthorized access or data breach}; monitoring computer security systems to limit access to computer networks and websites for detecting unauthorized access or data breach; technical support services, namely, troubleshooting in the nature of diagnosing computer software and hardware problems via the Internet, telephone, email, and in person; Computer services, namely, cloud hosting and hybrid cloud hosting provider services; technical support services, namely, monitoring and managing technical functions of co-location and cloud computing systems in the nature of computer network systems; providing temporary use of on-line, non-downloadable cloud computing software for use in electronic storage of data; Providing online non-downloadable software in the nature of a computer software system for remotely monitoring and analyzing environmental conditions and controlling devices and suggesting changes to the location of devices within a building, facility, grounds, or designated spatial area”

 

Scope Advisory and Identification of Manual Reference

 

Applicant may 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 application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

DISCLAIMER

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “CENTER” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from Oxford Dictionary shows this wording means “the point from which an activity or process is directed.” See the attached Oxford Dictionary evidence from http://en.oxforddictionaries.com/definition/us/center. Thus, the wording merely describes a feature or characteristic of applicant’s goods and/or services because it describes that applicant’s computer hardware and software systems are a point from which the user can monitor environmental conditions and control devices within a building, facility, grounds, or designated spatial area, and further, merely describes that applicant is a center or point from which its computer-related services emanate.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CENTER” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

COMMUNICATIONS WITH THE TRADEMARK OFFICE

 

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 refusal(s) and/or requirement(s) 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. 

 

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.  

 

 

 

Lauren Roncoroni

/Lauren Roncoroni/

Trademark Examining Attorney

Law Office 109

Phone: (571) 270-5661

Lauren.Roncoroni@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/20/2019 FOR U.S. APPLICATION SERIAL NO. 88338486

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.