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:  February 28, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 6, 2020.

 

In a previous Office action(s) dated August 6, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement(s): provide additional information about attorney of record. Applicant was also advised of a prior-filed application.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: additional information provided about attorney of record.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney now maintains and continues the following refusal: Trademark Act Section 2(d) for a likelihood of confusion with mark in U.S. Registration No. 4117592.

 

Further, the referenced prior-pending application has since registered. Therefore, registration is additionally refused as follows.

 

 

SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4117592 and 5894596.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached and previously attached registrations.

 

Applicant’s mark is, as amended, “POWERTEK”, for use with:

 

Class 9: Battery Charging Cables and Power Adaptors for Charging Smartphones and Tablet Computers

 

The registered marks are as follows:

 

U.S. Registration No. 4117592 “TEKPOWER”, for use with:

 

Class 9: Power supplies; voltage stabilizing power supplies; electrical transformers; electrical voltage transformers; test instruments, namely, gas analyzers, moisture analyzers, battery analyzers, liquid analyzers, light spectrum analyzers, electronic frequency spectrum analyzers; spectrograph apparatus; digital multimeters; analog multimeters; spectrograph apparatus; and voltage meters

 

U.S. Registration No. 5894596 “POWERTEC SOLUTIONS INTERNATIONAL”, for use with:

 

Class 9: Electronic power supplies, uninterruptible electronic power supplies and renewable electronic battery backup power supply, all sold through industrial and commercial trade channels only and not sold through retail outlets

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

As Compared to Registration No. 4117592 “TEKPOWER”

 

Applicant's mark is “POWERTEK” and the registrant's mark is “TEKPOWER”. The parties’ marks are comprised of the same terms, namely, “power” and “tek”, presented in reverse combinations. As discussed in the first Office action, confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).

 

In its February 6, 2020 response, applicant argues that the commercial impressions of its mark and the registrant's mark differ because applicant and the registrant market their goods in a different manner. See applicant's response at Pages 5-7. The trademark examining attorney respectfully disagrees.

 

The marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). As such, a determination as to the similarity between applicant's and the registrant's marks is made based on the marks in the drawings only.

 

The attached evidence from Lexico shows the word “power” means “energy that is produced by mechanical, electrical, or other means and used to operate a device.” The wording “tek” in both marks is merely a purposeful misspelling of the term “tech”; the attached dictionary evidence shows this word means “technology.” Here, the reverse combinations of the terms “power” and “tek” presented in the parties’ marks create a substantially similar commercial impression of technological goods that are used to produce energy by mechanical, electrical, or other means.

 

Because applicant's and the registrant's marks share reverse combinations of the same terms that create an overall similar commercial impression, the marks are confusingly similar.

 

As Compared to Registration No. 5894596 “POWERTEC SOLUTIONS INTERNATIONAL”

 

Applicant's mark is “POWERTEK” and the registrant's mark is “POWERTEC SOLUTIONS INTERNATIONAL”, where the wording “SOLUTIONS INTERNATIONAL” is disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the dominant portion of the registrant's mark is the wording “POWERTEC”.

 

Here, applicant's “POWERTEK” mark is identical in sound to the dominant wording “POWERTEC” in the registrant's mark. 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).

 

In its response, applicant argues that applicant's and the registrant's marks do not create a substantially similar overall commercial impression because the the wording “SOLUTIONS INTERNATIONAL” is included in the registrant's mark. See applicant's response at Page 10. The trademark examining attorney respectfully disagrees.

 

As discussed above, the wording “SOLUTIONS INTERNATIONAL” is descriptive for the registrant's goods. As such, this wording serves no source identifying function in the mark and does not create a separate, distinct commercial impression apart from the dominant wording “POWERTEC” in the registrant's mark; thus, the dominant wording in the registrant's mark remains identical in sound and commercial impression to the entirety of the applicant's mark.

 

Because applicant's mark is identical in sound to the dominant wording in the registrant's mark such that the marks create a substantially similar overall commercial impression, the marks are confusingly similar.

 

Comparison of 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).

 

As Compared to Registration No. 4117592 “TEKPOWER”

 

In its February 6, 2020 response, applicant argues that applicant's and the registrant's goods are not related because the parties’ respective marks are used in connection with goods that are dissimilar in nature. To support its argument, applicant has provided screenshots of the registrant's alleged goods and indicate that applicant's and the registrant's goods are marketed to different consumers. See applicant's response at Page 5-9. The trademark examining attorney respectfully disagrees.

 

It is well-settled that determining likelihood of confusion is based on the description of the goods 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 power supplies, which presumably encompasses all goods of the type described, including applicant’s more narrow battery charging cables and power adaptors for charging smartphones and tablet computers. That is, the registrant's goods include all types of power supplies, regardless of their intended market or consumer. 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)).

 

While applicant argues that the parties’ goods have different buyers, the trademark examining attorney respectfully disagrees. See applicant's response at Page 8. Here, based on the identification of goods of record, neither applicant's nor the registrant's goods have restrictions as to nature, type, channels of trade, or classes of purchasers and as such 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.

 

As Compared to Registration No. 5894596 “POWERTEC SOLUTIONS INTERNATIONAL”

 

As discussed above, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. 

 

In this case, the registration uses broad wording to describe “electronic power supplies… all sold through industrial and commercial trade channels only and not sold through retail outlet,” which presumably encompasses all goods of the type described, including applicant’s more narrow battery charging cables and power adaptors for charging smartphones and tablet computers.  That is, the registrant's goods include all types of electronic power supplies, regardless of their intended market or consumer. Thus, applicant’s and registrant’s goods are legally identical. 

 

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.

 

Notably, while the registrant's goods are identified as being sold through “commercial trade channels only,” note that “commercial trade” merely relates to commerce or general business activity involving the buying and selling goods and services. See attached evidence from Lexico. As such, any products or services offered or rendered for sale through normal channels of trade are considered to be offered through commercial trade channels. Therefore, neither applicant's nor the registrant's goods have any restrictions are to channels of trade or classes of purchasers.

 

Thus, applicant’s and registrant’s goods are related.

 

Conclusion

 

The relatedness of the goods here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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 February 28, 2020 for

U.S. Trademark Application Serial No. 88438652

 

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. 

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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 February 28, 2020, 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.”