To: | KINETICO INCORPORATED (docketing@tarolli.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88381237 - AXIUM - KIN-193149US |
Sent: | 5/31/2019 2:04:28 PM |
Sent As: | ECOM113@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 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88381237
MARK: AXIUM
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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: KINETICO INCORPORATED
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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: 5/31/2019
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
All other issues were addressed in the Examiner’s Amendment dated 05/10/2019.
The following is a SUMMARY OF ISSUES that applicant must address:
• Section 2(d) Refusal – Likelihood of Confusion
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark AXIOM in U.S. Registration No. 3700422. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is AXIUM (standard character mark) used in connection with the goods “Water treatment, water conditioning and purifying systems and apparatus, namely, water softening apparatus and installations, drinking water filtration systems comprised of water filters and parts and fittings thereof and replacement parts therefor, drinking water purification units, reverse-osmosis membrane units and whole-house water filters, water conditioning and purifying systems for residential, commercial and industrial use, comprised of water filters, sterilizing filters, drinking water filters, additive containing filters, additive containing cartridges and membrane filtering units” in International Class 011.
Registrant’s mark is AXIOM (standard character mark) used in connection with the goods “Temperature-controlled beverage dispensers, namely, heated beverage dispensing units for commercial use; beverage brewing equipment, namely, electric coffee makers; heated portable beverage dispensing units; portable hot beverage making and hot water dispensing machines and portable hot beverage collecting and serving containers sold as a unit therewith; electric coffee urns; electric beverage and water warmers; electric tea and electric iced tea brewers for commercial use” in International Class 011.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods.” 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)); see TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Applicant’s mark AXIUM and registrant’s mark AXIOM are confusingly similar.
Applicant’s mark and registrant’s mark are similar in appearance, sound, meaning, and commercial impression. Applicant’s mark and registrant’s mark only differ in appearance by applicant’s use of the letter “U” instead of registrant’s use of the letter “O”, specifically, AXIUM instead of AXIOM. The marks are also similar in sound. The attached evidence from merriam-webster.com shows that the combination of the letters “ium” and “iom” can have the same pronunciation, specifically, \ ē-əm \. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Additionally, while registrant’s mark AXIOM means “A statement or proposition which is regarded as being established, accepted, or self-evidently true”, applicant’s mark AXIUM has no meaning and therefore, would be understood by consumers as being a new or alternate spelling of the word AXIOM. See attached evidence from en.oxforddictionaries.com defining AXIOM and showing no definition of AXIUM. Thus, given the close spellings and very similar sound of the marks, consumers would understand the words AXIOM and AXIUM as giving the similar impression of a true statement in each of the marks.
Therefore, although the applicant’s mark and registrant’s mark have minor differences, the marks are very similar and thus have the same overall commercial impression, and as a result, purchasers are likely to be confused as to the source of the applicant’s and registrant’s goods. Therefore, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
The goods 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).
Applicant’s goods “Water treatment, water conditioning and purifying systems and apparatus, namely, water softening apparatus and installations, drinking water filtration systems comprised of water filters and parts and fittings thereof and replacement parts therefor, drinking water purification units, reverse-osmosis membrane units and whole-house water filters, water conditioning and purifying systems for residential, commercial and industrial use, comprised of water filters, sterilizing filters, drinking water filters, additive containing filters, additive containing cartridges and membrane filtering units” in International Class 011 are related to registrant’s goods “Temperature-controlled beverage dispensers, namely, heated beverage dispensing units for commercial use; beverage brewing equipment, namely, electric coffee makers; heated portable beverage dispensing units; portable hot beverage making and hot water dispensing machines and portable hot beverage collecting and serving containers sold as a unit therewith; electric coffee urns; electric beverage and water warmers; electric tea and electric iced tea brewers for commercial use” in International Class 011.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
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.
/Rebecca D. Coughlan/
Rebecca D. Coughlan
Examining Attorney
Law Office 113
(571)272-4975
rebecca.coughlan@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.