Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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 23, 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion – Partial to Goods Listed
• Identification of Goods and Services Requirement
• Partial Abandonment Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4572605 (LINX).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The stated refusal refers to the following goods and does not bar registration for the other goods:  “Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, structures and components of the foregoing, namely, cross port bleed valves, and replacement parts for the foregoing” in Class 9.

 

Applicant seeks to register the mark “LINK” for “Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, structures and components of the foregoing, namely, cross port bleed valves, and replacement parts for the foregoing” in Class 9

 

The registered mark “LINX” identifies “valves being parts of machines; spool valves being parts of machines; valves being parts of machines used in energy recovery equipment, and structural components and structural parts thereof” in Class 7.

 

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.

 

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 comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Although applicant’s mark appears in stylized form and with a design element, the registered mark appears in standard characters and therefore could appear in a similar manner. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In this case, the applicant’s mark, LINK, creates a similar overall commercial impression to the cited registered mark, LINX, because the marks are phonetically similar and share the same first three letters. The registered mark appears to only be a plural form of the applicant’s mark and as such also shares a similar meaning.

 

Therefore, the marks are highly similar and likely to cause confusion.

 

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).

 

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)).  

 

In this case, the registration uses broad wording to describe “valves being parts of machines”, which presumably encompasses all goods of the type described, including applicant’s more narrow “Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, structures and components of the foregoing, namely, cross port bleed valves, and replacement parts for the foregoing”.  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.

 

For these reasons, consumers are likely to encounter the parties’ goods in the same market channels.  Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods provided under the marks.  Accordingly, registration is refused under Trademark Act Section 2(d).

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF SERVICES REQUIREMENT

 

Applicant must clarify some of the wording in the identification of services because it is indefinite or overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. 

 

Specifically, in Class 9, a variety of the wording after the “namely” in this class does not clearly note that the goods are testing and measuring equipment, as limited in the perambulatory text.

 

In Class 42, it is unclear if the wording following the “namely” is intended to clarify the nature of the testing equipment or the equipment being tested.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, structures and components of the foregoing, namely, data acquisition systems, vibration test systems, wheel impact testers, eccentric mass wheel testers, steering assembly test stands, bearing endurance test machines, biaxial seismic exciters, ball joint boot test machines, seat vibration testers, brake compressibility machines, spinning rotary actuator testers, fatigue rated rotary actuator testers, rotary actuator testers, hydrostatic bearing actuator testers, fatigue rated actuator testers, linear servo-rated actuator testers, hose testing machines, structural load frames testers, fatigue rated ball joints testers, fatigue rated hydrostatic bearing actuator testers, steering pump test systems, electric steering durability system testers, alternator and starter testers, electric steering performance system testers, exhaust corrosion fatigue testers, hydraulic power steering test stands, table top load frame testers, cross port bleed valve testers, spiral washer testers, differential pressure transducer testers, fatigue rated swivel joint testers, hydraulic control manifolds, high strength fasteners, hydraulic power supplies, hub and wheel bearing testers, brake shim testing stands, radial fatigue machines, biaxial wheel testers, rotary fatigue machine testers, brake dynamometers, high speed rail dynamometers, master cylinder test stands, vehicle disc thickness variation and drag testers, rotor mapping station testers, residual drag and rotor thickness variation machine testers, shear test machines, booster test stands, torque flex durability machine testers, low pressure rotor wear test machines, aircraft sub-scale dynamometers, automotive sub-scale dynamometers, chase friction material test systems, friction standard dynamometers, tire-coupled aircraft dynamometers, aircraft roll dynamometers, electric vehicle motor and driveline stand testers, manual clutch durability test machines, automatic transmission high speed test systems, transmission torque cycling durability machine testers, driveline test systems, chassis dynamometers, brake dynamometers, roller brake testers, mobile brake testers, mobile air system expert testers, spring testers, wet friction test stands, wet friction test machines, digital squareness-under-load unit testers, friction assessment and screening test machines, starter motor test stands, display module testers, automotive brake performance dynamometers, hydraulic piping, road load simulation system testers, automotive inertia brake dynamometers, brake functionality test stands, and replacement parts for the foregoing 

 

Class 42: Development and implementation of software, hardware and technology solutions for testing of vehicles, commercial vehicles, construction equipment, structures and components of the foregoing in the nature of data acquisition systems, squeal report applications for brake noise, vibration and harshness, control software, software porting, laboratory information management systems, regenerative braking simulations, and diagnostic tools for antilock braking systems

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services 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.

 

Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Classes 9 and 42 will be deleted from the application: 

 

Class 9: Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, structures and components of the foregoing, namely, spinning rotary actuators, fatigue rated rotary actuators, rotary actuators, hydrostatic bearing actuators, fatigue rated actuators, linear servo-rated actuators, structural load frames, fatigue rated ball joints, fatigue rated hydrostatic bearing actuator, electric steering durability systems, electric steering performance systems, table top load frames, cross port bleed valves, spiral washers, differential pressure transducers, fatigue rated swivel joints, hub/wheel bearing testers, brake shim testing stands, radial fatigue machines, rotary fatigue machine, rotor mapping station, residual drag and rotor thickness variation machine, torque flex durability machine, electric vehicle motor and driveline stands, transmission torque cycling durability machine, mobile air system expert, digital squareness-under-load unit, display module, road load simulation systems, and replacement parts for the foregoing 

 

Class 42: Development and implementation of software, hardware and technology solutions for testing of vehicles, commercial vehicles, construction equipment, structures and components of the foregoing, namely, data acquisition systems, squeal report applications for brake noise, vibration and harshness, control software, software porting, laboratory information management systems, regenerative braking simulations, and diagnostic tools for antilock braking systems

 

The application will then proceed with the following goods in International Classes 7 and 9 only:   

 

Class 7: Machines for manufacturing electric motors, namely, stator coil lacing machines.

 

Class 9: Testing and measuring equipment and machines for testing vehicles, commercial carriers, construction equipment, structures and components of the foregoing, namely, data acquisition systems, vibration test systems, wheel impact testers, eccentric mass wheel testers, steering assembly test stands, bearing endurance test machines, biaxial seismic exciters, ball joint boot test machines, seat vibration testers, brake compressibility machines, hose testing machines, fatigue rated steering pump test systems, , alternator and starter testers, exhaust corrosion fatigue testers, hydraulic power steering test stands, hydraulic control manifolds, high strength fasteners, brake shim testing stands, radial fatigue machines, biaxial wheel testers, brake dynamometers, high speed rail dynamometers, master cylinder test stands, vehicle disc thickness variation and drag testers, shear test machines, booster test stands, , low pressure rotor wear test machines, aircraft sub-scale dynamometers, automotive sub-scale dynamometers, chase friction material test systems, friction standard dynamometers, tire-coupled aircraft dynamometers, aircraft roll dynamometers, manual clutch durability test machines, automatic transmission high speed test systems, driveline test systems, chassis dynamometers, brake dynamometers, roller brake testers, mobile brake testers, spring testers, wet friction test stands, wet friction test machines, friction assessment and screening test machines, starter motor test stands, automotive brake performance dynamometers, automotive inertia brake dynamometers, brake functionality test stands, and replacement parts for the foregoing 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Response Guidelines

 

Please 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. 

 

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  

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 23, 2019 for

U.S. Trademark Application Serial No. 88418729

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”