To: | NextGen Squad, Inc. (claudiaLchong@yahoo.com) |
Subject: | U.S. Trademark Application Serial No. 88405164 - FUSETECH - N/A |
Sent: | July 17, 2019 10:21:05 AM |
Sent As: | ecom121@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88405164
Mark: FUSETECH
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Correspondence Address:
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Applicant: NextGen Squad, Inc.
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Reference/Docket No. N/A
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.
Issue date: July 17, 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
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is FUSETECH in standard characters for “Fuse clips and panel-mounted fuse holders for use with electronic glass and ceramic fuses; Fuse wire; Fuses; Fuses; Fuses for automobiles; Fuses for electric current; Electric fuse boxes; Electrical fuses; Electronic glass and ceramic fuses for use with any electronic equipment using A/C power; Metal alloy wires for electrical fuses.”
The cited registration (Reg. No. 1616468) is FUSETEK in standard characters for “industrial electrical fuses and parts therefor.”
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.
Comparison of the Marks
Turning to the first prong of the test, a comparison must be made between applicant’s applied-for mark FUSETECH in standard characters and Reg. No. 1616468 for the mark FUSETEK in standard characters.
In the present case, applicant’s mark is FUSETECH and registrant’s mark is FUSETEK. These marks are nearly 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 essentially 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. Id. The difference in spelling in the term TECH does not change the sound or meaning of the mark and the difference in appearance in negligible. Therefore, the marks are confusingly similar.
Comparison of the Goods
Applicant’s identified goods are “Fuse clips and panel-mounted fuse holders for use with electronic glass and ceramic fuses; Fuse wire; Fuses; Fuses; Fuses for automobiles; Fuses for electric current; Electric fuse boxes; Electrical fuses; Electronic glass and ceramic fuses for use with any electronic equipment using A/C power; Metal alloy wires for electrical fuses.”
Reg. No. 1616468’s identified goods are “industrial electrical fuses and parts therefor.”
In this case, the application uses broad wording to describe fuses, which presumably encompasses all goods of the type described, including registrant’s narrower industrial fuses and parts. 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 goods 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 goods of the parties have no 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)). Thus, applicant’s and registrant’s goods are related.
Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the goods are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the additional grounds for refusal.
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
Here, applicant has applied to register the mark FUSETECH for use in connection with “Fuse clips and panel-mounted fuse holders for use with electronic glass and ceramic fuses; Fuse wire; Fuses; Fuses; Fuses for automobiles; Fuses for electric current; Electric fuse boxes; Electrical fuses; Electronic glass and ceramic fuses for use with any electronic equipment using A/C power; Metal alloy wires for electrical fuses.”
Notably, applicant’s identification indicates that its goods are fuses and parts. Therefore, the wording FUSE is descriptive of or generic for applicant’s goods. Moreover, the attached evidence shows that the word TECH is defined as “technical; technology.” See, attached dictionary definition. Furthermore, “technology” is defined as “the branch of knowledge that deals with the creation and use of technical means and their interrelation with life, society, and the environment, drawing upon such subjects as industrial arts, engineering, applied science, and pure science.” See, id. Therefore, the term TECH merely describes a characteristic of applicant’s goods, namely, the technical nature or technology incorporated within applicant’s fuses and parts.
Therefore, the mark FUSETECH must be refused registration under Section 2(e)(1) of the Trademark Act because, as applied to the identified goods, it merely describes a characteristic of applicant’s goods, namely, fuses.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
ADVISORY: SUPPLEMENTAL REGISTER – INTENT TO USE APPLICATION
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
IDENTIFICATION OF THE GOODS
Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “Fuses.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate:
IC 009: Fuse clips and panel-mounted fuse holders for use with electronic glass and ceramic fuses; Fuse wire; Fuses; Fuses for automobiles; Fuses for electric current; Electric fuse boxes; Electrical fuses; Electronic glass and ceramic fuses for use with any electronic equipment using A/C power; Metal alloy wires for electrical fuses
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.
For this application to proceed further, 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. In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c). Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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
/Mildred Black/
Examining Attorney
Law Office 121
571.270.1217
mildred.black@uspto.gov
RESPONSE GUIDANCE