To: | ABB Asea Brown Boveri Ltd (mail@iphorgan.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88390379 - ABB FUTURE LABS - ABB 12504 US |
Sent: | 6/21/2019 4:53:08 PM |
Sent As: | ECOM115@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88390379
MARK: ABB FUTURE LABS
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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: ABB Asea Brown Boveri Ltd
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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: 6/21/2019
The application has been reviewed by the assigned trademark examining attorney.
List of Issues Requiring Response
Applicant must respond timely and completely to the following issues:
15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
1. Trademark Act Section 2(d) Likelihood of Confusion Refusal to Register
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3953069. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The registered mark is FUTURES LAB for “Invention and design services, namely, the invention, design and development of new products and processes; technical consulting in connection with the foregoing; technical consulting in the field of new product development.”
The applied-for mark is ABB FUTURE LAB for “Scientific research; industrial research in the fields of mechanical engineering, machines and machine tools, power plants,
electricity generation, energy efficiency, energy saving and environmental protection; creation of data processing computer software programs; services provided by an industrial designer; services
provided by a packaging designer; quality control for others; computer consulting services, particularly in the field of technical security; software as a service (SAAS) services featuring software
for installation optimization, industrial automation, machine diagnostics and for the optimization of management processes in the fields of industry, healthcare, manufacture and infrastructure with
software; software as a service (SAAS) services featuring software for data capture, organization, distribution and analysis, automation, diagnosis and optimization of procedures in the fields of
home automation, infrastructure and building management, power systems, power generation, industrial automation, industrial process automation, transportation and infrastructure; software as a
service (SAAS) services featuring software for recording, organizing, distribution and analysis of data and for the management, control, automation and network connection between devices, apparatus,
sensors and control systems in the fields of home automation, management of infrastructure and building, power systems, power generation, industrial automation, industrial process automation,
transportation and infrastructure; software as a service (SAAS) services featuring software for recording, organizing, distribution and analysis of data and for the management, control, automation
and network connection between devices, apparatus, sensors and control systems in the fields of home automation, management of infrastructure and building, power systems, power generation, industrial
automation, industrial process automation, transportation and infrastructure; software as a service (SAAS) services featuring software for recording, organizing, distribution and analysis of data and
for the control, automation and network connection between devices, devices, sensors and control systems in the fields of home automation, management of infrastructure and buildings, power networks,
power generation, industrial automation, industrial process automation, transportation and infrastructure; cloud computing featuring software for assets optimization, industrial automation, machine
diagnostics and optimization of administrative procedures in the field of industry, healthcare, manufacturing and infrastructure; technology consultancy relating to electrical systems, control
systems, automation systems, power plants, oil and gas equipment, machinery and machine tools, heating, ventilation, air conditioning, electricity production and distribution systems and computer
hardware and software.
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.
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).
The wording “FUTURES LAB” in the registered mark is the plural and singular of “FUTURE LABS” in the applied-for mark. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
The addition of the house mark ABB to the applied-for mark does not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar.
Relatedness of the Goods/Services
The services in the registration, "Invention and design services, namely, the invention, design and development of new products and processes; technical consulting in connection with the foregoing; technical consulting in the field of new product development," could be identical to the " technology consultancy relating to electrical systems, control systems, automation systems, power plants, oil and gas equipment, machinery and machine tools, heating, ventilation, air conditioning, electricity production and distribution systems and computer hardware and software" in the application. Registrant's technical consulting could be identical to the technology consulting in the application, and the registration is not limited to any particular types of new products, and processes, and thus could include the subjects in the application. Applicant’s research and design services could also encompass the design and development services in the registration. 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)).
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)).
Conclusion
Given the similarity of the marks and the relatedness of the services, consumers are likely to confuse the source of the services set forth in the application and the registration. Accordingly, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
Applicant may respond to the refusal by submitting evidence and arguments in support of registration.
2. Earlier Filed Pending 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.
3. Clarification of Identification and Classification of Services Required
The word “technology consultancy relating to electrical systems, control systems, automation systems, power plants, oil and gas equipment, machinery and machine tools, heating, ventilation, air conditioning, electricity production and distribution systems and computer hardware and software” services in International Class 42 must be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e). Consulting services are classified according to the subject matter of the consulting service. TMEP §1402.11(e). To be in International Class 42, the consultation must be about computer or scientific technology used in a specific field. See attached note from the online searchable U.S. Acceptable Identification of Goods and Services Manual.
A sample amended identification is set forth below, which applicant may adopt, if accurate to describe applicant’s goods and/or services. Wording in italic type represents items in the identification that require clarification. Bold italic type indicates changes to applicant’s original identification. Strikethrough marking indicates wording that must be deleted. Wording in [brackets] following a
fill in the blank provides guidance and examples of acceptable amendments. For example, if the original identification is “clothing,” and the
suggestion is “clothing, namely, ____ [specify items in this class, e.g., shirts, pants and coats]”, applicant may amend the identification to “clothing,
namely, shirts, pants and coats” in the response to the office action.
International Class 37: technology consulting, namely, consulting about repair and maintenance of electrical systems equipment, control systems equipment, automation systems equipment, oil and gas equipment, machinery and machine tools, heating, ventilation, and air conditioning equipment, electricity production and distribution systems equipment, and computer hardware
International Class 39: technology consultancy about electricity systems, namely, consulting about electricity generation
International Class 40: technology consultancy about electricity systems, namely, consulting about electricity distribution; technology consulting, namely, consulting about custom fabrication of electrical systems equipment, control systems equipment, automation systems equipment, oil and gas equipment, machinery and machine tools, heating, ventilation, and air conditioning equipment, electricity production and distribution systems equipment, and computer hardware
International Class 42: Scientific research; industrial research in the fields of mechanical engineering, machines and machine tools,
power plants, electricity generation, energy efficiency, energy saving and environmental protection; creation of data processing computer software programs; services provided by an industrial
designer; services provided by a packaging designer; quality control for others; computer consulting services, particularly in the field of technical security; software as a service (SAAS) services
featuring software for installation optimization, industrial automation, machine diagnostics and for the optimization of management processes in the fields of industry, healthcare, manufacture and
infrastructure with software; software as a service (SAAS) services featuring software for data capture, organization, distribution and analysis, automation, diagnosis and optimization of procedures
in the fields of home automation, infrastructure and building management, power systems, power generation, industrial automation, industrial process automation, transportation and infrastructure;
software as a service (SAAS) services featuring software for recording, organizing, distribution and analysis of data and for the management, control, automation and network connection between
devices, apparatus, sensors and control systems in the fields of home automation, management of infrastructure and building, power systems, power generation, industrial automation, industrial process
automation, transportation and infrastructure; software as a service (SAAS) services featuring software for recording, organizing, distribution and analysis of data and for the management, control,
automation and network connection between devices, apparatus, sensors and control systems in the fields of home automation, management of infrastructure and building, power systems, power generation,
industrial automation, industrial process automation, transportation and infrastructure; software as a service (SAAS) services featuring software for recording, organizing, distribution and analysis
of data and for the control, automation and network connection between devices, devices, sensors and control systems in the fields of home automation, management of infrastructure and buildings,
power networks, power generation, industrial automation, industrial process automation, transportation and infrastructure; cloud computing featuring software for assets optimization, industrial
automation, machine diagnostics and optimization of administrative procedures in the field of industry, healthcare, manufacturing and infrastructure; technology consultancy, namely, ____ [specify subject in this class, e.g., computer system technology consulting] in the fields of relating to electrical systems,
control systems, automation systems, power plants, oil and gas equipment, machinery and machine tools, heating, ventilation, air conditioning, electricity production and distribution systems and
computer hardware and software
Applicant should consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual for assistance with identifying and classifying goods and services in trademark applications. See TMEP §1402.04.
Multiple Class Applications
(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 four classes; however, applicant submitted a fee(s) sufficient for only one class(es). 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 Sections 1(b) and/or 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
4. Disclaimer Required
Applicant must provide a disclaimer of the following unregistrable elements in the applied-for mark: the wording “LABS”. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.
The wording “LABS” means “a laboratory,” which is “a room or building equipped for scientific experimentation or research” and “a place for practice, observation, or testing.” See attached definition from the online American Heritage Dictionary. The wording “LABS” must be disclaimed as it is 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). Specifically, this wording merely describes that applicant’s research services could be performed in a laboratory, and that applicant’s software could be for use in the same.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LABS” 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.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).
5. Clarification of Entity Type Required
Applicant sets forth in the application the legal entity “company” and applicant’s address and/or country of organization as Switzerland. The designation “company” is typically an acceptable entity designation in a U.S. application for applicants from commonwealth countries. See TMEP §803.03(i). However, applicant has identified an address and/or country of organization that is not a commonwealth country (see http://www.thecommonwealth.org/Internal/142227/members/).
Therefore, applicant must clarify the legal entity in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may do so by (1) specifying the entity type that would be the equivalent of a “company” in the United States or (2) providing a description of the nature of the foreign entity that is applying. See TMEP §803.03(i).
Advisory re Section 44 Basis
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Applicant may 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.
April Roach
/April Roach/
Trademark Examining Attorney
Law Office 115
(571) 272-1092
april.roach@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.