To: | Canarm Ltd. (ipdocket@thompsoncoburn.com) |
Subject: | U.S. Trademark Application Serial No. 88400502 - CANARM - 51353-187080 |
Sent: | July 11, 2019 11:03:14 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88400502
Mark: CANARM
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Correspondence Address:
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Applicant: Canarm Ltd.
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Reference/Docket No. 51353-187080
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is partially refused because of a likelihood of confusion with the marks in U.S. Registration No. 5559917 CANARM. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 services and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
Applicant’s and registrant’s marks 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.
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).
Therefore, the marks are confusingly similar.
Comparison of Goods
Complementary, Single Source, and Same Trade Channels
Applicant and registrant’s goods are similar because they are complementary and thus consumers are accustomed to encountering products of the kinds produced by applicant (“electric motors for machines”) and registrant (“transmissions for machines”) bearing a singular mark and traveling through the same trade channels. 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). The attached internet evidence demonstrates the complementary nature of motors and transmissions, namely that engines transform one kind of energy into mechanical energy and transmissions controls the distribution of power generated by the engine. Moreover, the attached internet evidence from JASPER, BMW, and GEARHEAD demonstrates engines and transmissions emanate from a single source under a single mark and travel through the same trade channels. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Therefore, the goods are related because they are of the sort that emanate from the same source and sold in the same trade channels.
Conclusion – Section 2(d) Partial Refusal
Purchasers are likely to be confused as to the source of applicant’s goods because the marks are confusingly similar and the goods are related. Thus, registration is partially refused pursuant to Section 2(d) of the Trademark Act.
Applicant’s Options
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. The applicant should also note the following requirements.
IDENTIFICATION AND CLASSIFICATION
Identification is Indefinite and Overbroad
The identification of goods is indefinite and overbroad. Specifically, applicant must indicate:
The identification is also overbroad because it could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, animal enclosures namely metal tie stalls is in class 6 whereas animal enclosures namely non-metal tie stalls is in class 19.
Incorrect Classification
Therefore, applicant may respond by (1) adding the appropriate International Classes in the suggestions below to the application and reclassifying these goods in the proper international class, (2) deleting the goods that are misclassified from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Suggestions
Applicant may adopt the following wording, if accurate:
Class 5: Feed supplements for swine;
Class 6: Metal livestock pens and stalls; Animal feeding and management products enclosures namely
metal tie stalls, free stalls, gates, penning panels, and crates; Equipment for animal husbandry and spare and replacement parts therefor, namely metal
enclosures for swine; Metal stalls and pens for swine; Metal connectors for electrical fixtures, namely mounts for fastening lighting fixtures and electrical fans to a
surface;
Class 7: Animal feeding and management products namely Electronic feeders for
animals; Mechanized livestock feeders; Equipment for animal husbandry and spare and replacements parts therefor, namely electronic feeders for swine;
Electric motors for machines;
Class 9: Equipment for sorting and providing enrichment to sows and gilts namely actuators for operating lighting and loudspeakers for swine stall; Thermostats and timers for residential, commercial and agricultural use; Remote controllers for lighting, heating and ventilation equipment; Downloadable computer software, computer hardware and electronic control systems for machines for animal husbandry for swine, namely for controlling the operation of systems and devices for gestating, farrowing, providing feed, water, bedding, enrichment, activities, stimulation, access and vaccinations, for sorting sows and gilts, for monitoring, recording and management of data relating to swine, and, for controlling blending feed and feed supplements for swine; Electronic controllers for heating and ventilation systems of barns, commercial structures, and greenhouses;
Class 11: Electric space heaters for agricultural use; Mechanized
and non-mechanized livestock waterers; Lighting fixtures; Electric lamps; Light bulbs; Ceiling fans; Electric fans for household, agricultural and industrial purposes; ventilation fans for household, agricultural and industrial purposes; Ventilation hoods; Barn, commercial and greenhouse heating and ventilation products fans, namely roof
exhausts fans, wall exhausts fans, circulating fans, and blower fans;
Class 19: Animal feeding and management products enclosures namely non-metal gates; equipment for animal husbandry and spare and replacements parts therefor, namely non-metal enclosures for swine;
Class 20: Animal enclosures namely wood and plastic crates; Metal stalls and pens for swine;
Class 21: Animal feeding apparatus, namely, and management products animal activated livestock feeder; Equipment for animal husbandry and spare and replacements parts therefor, namely animal activated feeders for swine
Class 27: Cow stall floor mats; Flooring for swine enclosures;
Class 31: Animal feed
Advisories
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least ten (10) classes; however, applicant submitted a fee sufficient for only one (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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or 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.
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 response to this nonfinal Office action
Biftu, Beniam
/Ben Biftu/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 117
bbiftu@uspto.gov
RESPONSE GUIDANCE