| To: | The Aerospace Corporation (patentdocket@eversheds-sutherland.com) |
| Subject: | U.S. Trademark Application Serial No. 88357655 - X LAB - 11390-0169 |
| Sent: | December 31, 2019 10:35:21 AM |
| Sent As: | ecom119@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88357655
Mark: X LAB
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Correspondence Address: |
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Applicant: The Aerospace Corporation
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Reference/Docket No. 11390-0169
Correspondence Email Address: |
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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: December 31, 2019
This Office Action is in response to applicant’s communication filed on December 5, 2019.
In a previous Office Action dated June 17, 2019, the Trademark Examining Attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion; Prior-Pending Application. In addition, applicant was required to satisfy the following requirements: Description of the Mark; Disclaimer Required.
Based on applicant’s response, the Trademark Examining Attorney notes that the following requirement has been satisfied: Disclaimer Required. See TMEP §§713.02, 714.04.
In addition, the following refusal has been withdrawn in full: Prior-Pending Application. See TMEP §§713.02, 714.04. Moreover, the following refusal has been withdrawn in part: Section 2(d) Refusal – Likelihood of Confusion (as to U.S. Registration Nos. 2771235 and 5207140.
Further, the Trademark Examining Attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
INTRODUCTION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 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 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.
In this case, applicant is seeking to register X LAB in stylized font for “Engineering services in the aerospace field” in International Class 042. Registrant has registered HLXLAB in stylized font in International Class 042 for “Engineering services, namely, engineering.”
COMPARISON 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).
Here, applicant’s mark is entirely subsumed within registrant’s mark. Applicant has merely removed the letters “HL” from registrant’s mark. This does not overcome the remaining virtual identical nature of the marks.
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Applicant argues that the common element between the marks is “the exact prominent X element with different designs or fonts.” As noted above, both applicant and registrant also share the wording “LAB.” In addition, the “X” in registrant’s mark is itself separable and dominant. By contrast, the letters “HL” in registrant’s mark are combined and highly stylized. Accordingly, the appearance of registrant’s mark makes the “X LAB” feature the most prominent of the same.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Moreover, to the extent applicant argues that the design of the marks should be the focus, this argument fails as to the remaining registration as neither applicant nor registrant’s marks contain design elements. Also, although applicant insinuates in its arguments that its mark and that of registrant’s have a different commercial impression, applicant does not state what that different commercial impression is.
Finally, to the extent there could be a perceived difference between the marks, as will be explained further below, applicant and registrant’s services are legally identical. Where the services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Based on these considerations, the marks are identical in part.
COMPARISON OF THE SERVICES
Here, the registration uses broad wording to describe “Engineering services, namely, engineering,” which presumably encompasses all services of the type described, including applicant’s more narrow “Engineering services in the aerospace field.” 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 services of the parties have no further 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)).
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Applicant attaches evidence that registrant is engaged in the business of “ventilation and media supply for laboratories.” Working from this premise, applicant concludes that it and registrant do not operate their respective business “in the same field or market in such a way that would create an assumption that the services covered by the marks originate from the same source.” This is immaterial for Section 2(d) purposes, as such extrinsic evidence is not relevant in ex parte examination. Determining likelihood of confusion is based on the description of the 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)).
Relatedly, as noted above, registrant’s registration covers a broad field of essentially “engineering.” As that is part of the registration, registrant is entitled to protection for the entire scope of those services.
Thus, applicant’s and registrant’s services are related for Section 2(d) purposes.
CONCLUSION
Overall, because the marks are identical in part and the services are identical, a likelihood of confusion arises as to the underlying source of applicant’s services. Moreover, applicant’s arguments to the contrary are unconvincing. Accordingly, the refusal to register pursuant to Section 2(d) of the Trademark Act is hereby maintained and made FINAL.
DESCRIPTION OF THE MARK
Here, applicant has amended the description to that contained within the June 17, 2019 Office Action, except for the notion that the wording “LAB” is located to next to the letter “X” and is in blue. This has been deleted in applicant’s December 5, 2019 response. As noted above, all features of the mark must be described, including the color and positioning of the elements depicted in the drawing. Therefore, applicnat’s suggested deletion of the description of the colors in “lab” and its placement are not acceptable.
The following description is suggested, if accurate, changes are shown in bold:
The mark consists of the letter "X" in orange color. The right tip of the letter "X" is disconnected from the rest of the letter "X." The tip is in the color grey. Next to the letter “X” is the word “LAB” in blue.
As applicant’s response did not fully address the requirement, the requirement for amended description of the mark is hereby maintained and made FINAL.
DISCLAIMER LIMITATION (ADVISORY)
Although applicant has adopted the required disclaimer of the wording “LAB,” applicant’s response states that its agreement is limited to International Class 041, which is not a class in the application. The required disclaimer is applicable to the entire scope of applicant’s identification, which is International Class 042.
ASSISTANCE
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE