To: | Qualtek Electronics Corporation (drp@kjk.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88346570 - PPC - N/A |
Sent: | 6/6/2019 4:30:44 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88346570
MARK: PPC
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Qualtek Electronics Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/6/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark PPC (in standard characters) for “Electrical power connectors, Electric wire and cable, Electrical cables, Electrical shielding spacers for cables and cable assemblies, Electrical power extension cords, AC Power receptacles, electrical power outlets, multifunction electrical modules, plug assemblies and safety retainer clips, DVI Cables, HDMI Cables, USB cables, power inlet filters, power supply connectors and adaptors for use with portable electronic devices, Power adapters, circuit breakers, power supplies, and EMI filtered inlets or receptacles” in International Class 9. The mark in U.S. Registration No. 2007481 is PPC (in standard characters) for “coaxial and fiber-optic cable connectors; cable extenders; cable line terminators; cable adaptors; cable splice blocks; jumper cables; plastic tubing sold together with coaxial and fiber optic cables; and signal filters, namely traps; all of the foregoing for use in the cable television industry” in International Class 9. The mark in U.S. Registration No. 3651764 is PPC INNOVATE. CONNECT. (in standard characters) for “Communications equipment, namely, coaxial cable connectors; coaxial cable terminators; coaxial cable extenders; male and female coaxial cable splice adapters; coaxial cable connector security shields and radio frequency filters; protective covers and caps for cable connectors or terminators; fiber-optic cable connectors; wireless communication products, namely, high definition jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end and cable connectors, audio/video jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end, ethernet cable connectors and jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end, wireless jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end and cable connectors; all of the foregoing for use in the cable television and wireless communication industries” in International Class 9.
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.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. 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)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant has applied to register the mark PPC. The mark in U.S. Registration No. 2007481 is PPC, while the mark in U.S. Registration No. 3651764 is PPC INNOVATE. CONNECT. Each of the marks appear in standard characters.
Here, the first part of the wording in U.S. Registration No. 3651764 is “PPC”, which is identical to the entirety of the other registered mark and the wording in the applied-for mark. 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).
Therefore, the marks are identical in part, and highly similar in terms of connotation and overall commercial impression.
Similarity of the Goods
Applicant has identified “Electrical power connectors, Electric wire and cable, Electrical cables, Electrical shielding spacers for cables and cable assemblies, Electrical power extension cords, AC Power receptacles, electrical power outlets, multifunction electrical modules, plug assemblies and safety retainer clips, DVI Cables, HDMI Cables, USB cables, power inlet filters, power supply connectors and adaptors for use with portable electronic devices, Power adapters, circuit breakers, power supplies, and EMI filtered inlets or receptacles” in International Class 9. The mark in U.S. Registration No. 2007481 is for “coaxial and fiber-optic cable connectors; cable extenders; cable line terminators; cable adaptors; cable splice blocks; jumper cables; plastic tubing sold together with coaxial and fiber optic cables; and signal filters, namely traps; all of the foregoing for use in the cable television industry” in International Class 9. The mark in U.S. Registration No. 3651764 is for “Communications equipment, namely, coaxial cable connectors; coaxial cable terminators; coaxial cable extenders; male and female coaxial cable splice adapters; coaxial cable connector security shields and radio frequency filters; protective covers and caps for cable connectors or terminators; fiber-optic cable connectors; wireless communication products, namely, high definition jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end and cable connectors, audio/video jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end, ethernet cable connectors and jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end, wireless jumper assemblies in the nature of a coaxial cable with a cable connector pre-assembled on each end and cable connectors; all of the foregoing for use in the cable television and wireless communication industries” in International Class 9.
Here, the attached Internet evidence shows that all these types of items are closely related because they are all sold through the same channels to the same type of customers, and customers will be likely to encounter them in the same location. Thus use of almost identical marks would only cause confusion in this manner.
Therefore, the goods of applicant and registrant are similar and closely related.
Summary
In sum, applicant’s mark is identical in part and highly similar in connotation and overall commercial impression to both of the registered marks. In addition, applicant’s goods are similar to the goods identified in the registrations. Thus, it is likely consumers will mistakenly believe the goods emanate from the same source. 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).
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
For instance, several of the items require additional wording to state that these goods are electrical in nature.
In addition, wording such as “inlets” is indefinite and requires a common commercial name to be specified for the record.
Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of goods. If there is wording in the applicant’s version of the identification of goods which
should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard
font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 9: Electrical power connectors, Electric wire and cable, Electrical cables, Electrical
shielding spacers for cables and cable assemblies, Electrical power extension cords, EELCTRICAL AC Power receptacles, electrical power outlets, multifunction electrical RECTIFIER modules, ELECTRICAL plug assemblies and safety retainer clips BEING _____________ {specify common commercial name for these clips},
ELECTRICAL CABLES BEING DVI Cables, HDMI Cables, USB cables, power inlet filters BEING OPTICAL FILTERS, power supply connectors
and adaptors for use with portable electronic devices, Power adapters, circuit breakers, power supplies, and EMI Filtered Inlets BEING OPTICAL FILTERS or AND ELECTRICAL receptacles
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO.
In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions. All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct.
These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register. See the U.S. Counsel Rule change webpage for more information.
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.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@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.