United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88430321
Mark: ILINE
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Correspondence Address:
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Applicant: ShawCor Ltd.
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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: August 07, 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.
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.
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 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 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).
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).
Here, applicant’s mark is ILINE in standard character form, and registrants’ marks are I-LINE in standard character form, I-LINE in typed drawing form, I-LINE in typed drawing form, and I-LINE in typed drawing form. In this case, the applied-for mark, ILINE, is essentially identical in sound and highly similar in appearance and commercial impression to the registered marks, which are all I-LINE. The only difference between the applied-for mark and the registered marks is the hyphen between the letter “I” and the wording “LINE” in the registered marks. This difference is slight and does not change the essentially identical nature in sound and highly similar nature in appearance and commercial impression between the applied-for mark, ILINE, and the registered marks, which are all I-LINE.
Considering the above, the marks are sufficiently similar to cause a likelihood of confusion under Trademark Act Section 2(d).
Relatedness of the Goods and Services
I-LINE (U.S. REG. NO. 4752377)
In this case, applicant’s mark is ILINE in standard character form for, inter alia:
The cited registered mark is I-LINE in standard character form for “Computer-aided design software for use in the field of architectural design” in Class 9.
Here, the respective goods and services are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that CAD software for architectural design, computer software and software as a service for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information for oil, gas, and water utilities, and construction projects, data hosting services, and software design services are commonly provided together and commonly originate from the same source. The attached Internet evidence from Autodesk.com, Bentley.com, and Solidworks.com, establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark and that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., 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). See attached evidence from:
· http://www.autodesk.com/products/autocad/overview;
· http://www.autodesk.com/solutions/bim/infrastructure;
· http://www.autodesk.com/solutions/bim/architecture;
· http://www.bentley.com/en/products/brands/microstation;
· http://www.bentley.com/en/solutions/industries/oil-and-gas;
· http://www.bentley.com/en/solutions/project-delivery/architecture-and-engineering;
· http://www.bentley.com/en/subscriptions/cloud-services-subscription/cloud-services-subscription;
· http://www.bentley.com/en/software-developers/empowering-project-delivery-teams/projectwise-sdk;
· http://www.solidworks.com/solution/industries/construction-cities-territories;
· http://www.solidworks.com/solution/industries/energy-materials;
· http://www.solidworks.com/category/product-data-management; and
· http://www.solidworks.com/category/product-configurator.
Thus, upon encountering ILINE for software as a service for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information for oil, gas, and water utilities, and construction projects, data hosting services, and software design services, and I-LINE for CAD software for architectural design, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.
I-LINE, I-LINE, and I-LINE (U.S. REG. NOS. 2128985, 0939653, and 0755392)
In this case, applicant’s mark is ILINE in standard character form for “Computer hardware” in Class 9.
The cited registered mark are:
· I-LINE in typed drawing form for “circuit breakers” in Class 9;
· I-LINE in typed drawing form for “separate electrical panelboards, and electrical panelboards as components of switchboards” in Class 9; and
· I-LINE in typed drawing form for “Electrical Bus Duct Comprising an Assemblage of Electrical Bus Bars” in Class 9.
Here, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that computer hardware, circuit breakers, panel boards, switchboards, and electrical bus bars are commonly provided together and commonly originate from the same source. The attached Internet evidence from Siemens.com, Schneider-Electric.us, and Geindustrial.com, establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., 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). See attached evidence from:
· http://www.schneider-electric.us/en/product-range/61803-configurable-power-distribution/;
· http://www.geindustrial.com/products/embedded-power;
· http://www.geindustrial.com/products/circuit-breakers/residential-circuit-breakers;
· http://www.geindustrial.com/products/busway;
· http://www.geindustrial.com/products/panelboards; and
· http://www.geindustrial.com/products/switchboards.
Thus, upon encountering ILINE for computer hardware, and I-LINE, I-LINE, and I-LINE for circuit breakers, panel boards, switchboards, and electrical bus bars, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Therefore, with the contemporaneous use of highly similar marks, consumers are likely to conclude that the goods and services are related and originate from the same source. As such, registration must be refused under Trademark Act Section 2(d).
IDENTIFICATION OF GOODS AND SERVICES
Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services. See Nice Classification, 11th ed., version 2019 (Nice 11-2019). Applications filed on or after January 1, 2019 must comply with this new version. See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version. See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09. If applicant chooses to comply with the new version, the entire identification must comply with this version. See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries. See TMEP §1402.04.
Finally, the following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. Applicant should note that the brackets indicate where applicant must insert specific types of goods or services. The braces should NOT appear in the amended identification; only the specific goods or services inserted by applicant. Applicant need not amend identifications other than where specified.
Applicant may substitute the following wording, if accurate:
Class 9: Computer hardware; [further specify type of sensors, e.g., electronic] sensors, [further specify type of wire and cable, e.g., electric] wire and cable, encoded barcode labels and barcode readers, RFID antennae and readers, RFID tags, [further specify goods, e.g., computer] networking hardware, fiber optics, GPS modem, GPS radio and mobile devices in the nature of [specify the common commercial name of goods, e.g., mobile phones] for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information about the construction and operation of land and marine pipeline assets for oil and gas and water utilities industries and the construction and operation of infrastructure assets for generation and transmission of energy; downloadable computer software for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information about the construction and operation of land and marine pipeline assets for oil and gas, water utilities industries and construction and operation of infrastructure assets for generation and transmission of energy; downloadable computer software for the production, management and reporting of pipeline and infrastructure information regarding materials, manufacturing specifications, installation procedures, segment identification, and geographic information.
Class 16: Barcode labels for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information about the construction and operation of land and marine pipeline assets for oil and gas, water utilities industries and construction and operation of infrastructure assets for generation and transmission of energy.
Class 42: Software as a service (SAAS) in the field of software for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information about the construction and operation of land and marine pipelines and infrastructure for oil, gas and water utilities industries and construction and operation of infrastructure assets for generation and transmission of energy; [further specify common commercial name of services, e.g., computer services, namely, cloud hosting provider services] in the nature of data hosting services and user interface, for the production, management and reporting of pipeline and infrastructure information regarding materials, manufacturing specifications, installation procedures, segment identification, and geographic information; [further specify services, e.g., consulting] services in the field of design and implementation of computer hardware and customizing computer software for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information about the construction and operation of land and marine pipelines and infrastructure for oil and gas and water utilities industries and construction and operation of infrastructure assets for the generation and transmission of energy; [specify either “online” or “web-based”] non-downloadable computer software for identifying, locating, tracking, monitoring, testing, geographic information, reporting and storing information about the construction and operation of land and marine pipeline assets for oil and gas, water utilities industries and construction and operation of infrastructure assets for generation and transmission of energy.
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
The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ENTITY CLARIFICATION REQUIRED
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “corporation” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
FOREIGN REGISTRATION CERTIFICATE REQUIRED
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).
ATTORNEY BAR NUMBER AND ATTESTATION REQUIRED
QUESTIONS
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 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
/Andrew Crowder-Schaefer/
Trademark Examining Attorney
Law Office 104
(571) 272-0087
andrew.crowderschaefer@uspto.gov
RESPONSE GUIDANCE
