United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88405539
Mark: HEICO
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Correspondence Address:
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Applicant: Heico Corporation
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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 and applicant’s Voluntary Amendment have been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) 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
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.
Here, applicant has applied to register the mark HEICO in standard characters for “Aircraft parts, namely, avionics in the nature of avionic sensor systems, namely, aircraft speed sensors; avionic sensor systems, namely, aircraft altitude indicators; avionic sensor systems, namely, navigation systems; electrical and electro-optical systems and components for use in the aerospace, defense, communications, and computer industries” in Class 9.
The mark in Registration No. 2351115 is HEICO in stylized characters with a design for “Motor vehicle structural parts, namely, exhaust pipes, mufflers, tailpipes, air filters for mufflers, chassis, brakes, gear boxes, rear axle gear boxes, wheel rims, steering wheels, auxiliary fuel tanks, motor vehicle aero dynamic parts in the form of spoilers and car body extension parts” in Class 12.
The mark in Registration No. 3956992 is HEICO in stylized characters with a design for “Performance-enhancing engine kits for motor vehicles comprising air filters, intercooler, injectors, turbo chargers, cam shafts, piston cranks, intake and exhaust valves, fuel economizers for motors and engines, exhaust systems for motors and engines comprised of pipes, collectors and mufflers, catalytic converters for vehicle exhausts and exhaust tips” in Class 7 and “Efficiency enhancement chip processors and engine control chip processors, for use with vehicle engine parts” in Class 9.
The mark in Registration No. 4562017 is HEICO-LOCK in standard characters for “Screw locking elements of metal; lock washers of metal; nuts of metal” in Class 6.
The mark in Registration No. 2690313 is HEYCO in stylized characters with a design for “electric wire terminals, connectors, fasteners, contacts, wiring harnesses and other similar stamped or molded parts, components and assemblies for electrical cord sets; and electrical wiring conduits, conduit fittings and strain reliefs” in Class 9.
And the mark in Registration No. 0782750 is HEYCO in typed drawing form for “strain relief bushings for electrical conductors and cables, electrical heater plug contacts, cube tap contacts, and other similar stamped or molded parts for electrical cord sets” in Class 9.
The marks in Registration Nos. 2351115 and 3956992 are both owned by the same registrant, Heico Sportiv GmbH & Co. KG, a company of Germany, and the marks in Registration Nos. 2690313 and 0782750 are both owned by the same registrant, Heyco Products Corp., a corporation of Delaware.
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 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).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Therefore, although the marks in Registration Nos. 2351115, 3956992, and 2690313 all contain a design element, the word HEICO or HEYCO is likely to make a greater impression upon purchasers and is considered the dominant element for likelihood of confusion purposes.
In the present case, applicant’s mark is HEICO and the marks in Registration Nos. 2351115 and 3956992 are HEICO. Therefore, the word portion of these 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 the word portion of these marks 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.
Additionally, applicant’s mark has the same first word as the mark in Registration No. 4562017, HEICO-LOCK. Therefore, these marks are also highly similar in sound and appearance. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression from the mark in Registration No. 4562017 because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. These marks are also likely to convey a similar commercial impression because HEICO-LOCK could be perceived to be an additional product line associated with the general HEICO brand.
Finally, applicant’s mark is also highly similar in sound and appearance to the marks in Registration Nos. 2690313 and 0782750, HEYCO. The only difference between these marks and applicant’s mark HEICO is that applicant’s mark replaces the letter “Y” with an “I”. But even with the different letter 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). Because applicant’s mark and the marks in Registration Nos. 2690313 and 0782750 are highly similar in sound and appearance, the small difference in the letter “I” and “Y” in the marks is also not enough to create a distinct commercial impression between these marks.
Because the marks look and sound similar and create the same commercial impression, they are considered similar for likelihood of confusion purposes.
Relatedness of Goods
Furthermore, the application uses broad wording to describe its “components for use in the aerospace, defense, communications, and computer industries.” The goods in Registration Nos. 4562017, 2690313, and 0782750 are all types of components that could be used in aerospace, defense, communications, and computer industries because the registrations do not have any restrictions as to the field of use of the components. 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 Registration Nos. 4562017, 2690313, and 0782750’s goods are all legally identical in part. 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 and/or services 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 registrants’ goods are related.
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark must be refused under Section 2(d) of the Trademark Act.
ADVISORY: PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 79255059 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
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 mark in the referenced application. 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.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
Applicant may substitute the following wording, if accurate:
Class 7: Electrical door opening systems for use in the aerospace, defense, communications, and computer industries; Machine parts that heat and maintain temperature in machine piping systems, namely, steam jacketing, electrical tracing, and insulation sold as integral components of finished machines for use in the aerospace, defense, communications, and computer industries
Class 9: Aircraft parts, namely, avionics in the nature of avionic sensor systems, namely aircraft speed sensors; avionic sensor systems, namely aircraft altitude indicators; avionic sensor systems, namely navigation systems; electrical warning light systems for use in the aerospace, defense, communications, and computer industries; Electrical components in the nature of protective relays for use in the aerospace, defense, communications, and computer industries
Class 11: Electrical floor heating systems, namely, cables, electric mats and sensors for floor heating systems sold as a unit for use in the aerospace, defense, communications, and computer industries
Class 12: Sensors for land vehicles, namely electrical power steering torque sensors, sold as a component of the power steering system for use in the aerospace, defense, communications, and computer industries; Sensors for land vehicles, namely, electrical power steering torque sensors, sold as a component of the power steering system for use in the aerospace, defense, communications, and computer industries
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.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 9; and applicant needs a specimen for Classes 7, 11, 12, 37, and 42. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) 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.
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 response to this nonfinal Office action
/Maureen Reed/
Examining Attorney
Law Office 115
571-272-0851
maureen.reed@uspto.gov
RESPONSE GUIDANCE