To: | THUNDER SOFTWARE TECHNOLOGY CO., LTD. (tao.wang@trademarksearchglobal.com) |
Subject: | U.S. Trademark Application Serial No. 88438895 - TURBOX - 190230-09/35 |
Sent: | August 08, 2019 12:11:09 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88438895
Mark: TURBOX
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Correspondence Address:
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Applicant: THUNDER SOFTWARE TECHNOLOGY CO., LTD.
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Reference/Docket No. 190230-09/35
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.
The referenced application has 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.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has determined the following. TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (as to specific goods and services)
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4287277. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
U.S. Registration No. 4287277is for the mark TURBOX with the letters TUR in black and contained in a white rectangle, and the letters BOX in white and contained in a blue rectangle. The mark is applied to the goods of:
“Data-processing equipment; computer programs and software for recording and processing information about maintenance, servicing, and repair of aircraft engines, modules and components thereof; software for managing repair, upkeep, servicing, maintenance and reconditioning operations conducted on an aircraft engine and/or on modules and components thereof; magnetic, optical and digital recording media, namely, pre-recorded DVDs and CDs featuring maintenance, servicing and repair of aircraft engines, multimedia software recorded on CD-ROMs featuring maintenance, servicing, and repair of aircraft engines, and pre-recorded DVDs featuring maintenance, servicing, and repair of aircraft engines; data banks containing information about aircraft engines, the repair, overhaul, servicing, maintenance and reconditioning of engines, modules and components of aircraft engines, namely, computer servers; apparatus for recording, transmitting and reproducing sound, images and/or data” in class 9,
and the services of :
“Internet service provider services, namely, transmitting information via the Internet concerning global computer network data in the field of maintenance, servicing, and repair of aircraft engines; rental of access time to a database server center; all these services being used and/or intended for the aeronautical sector” in class 38, and
“Services for developing, designing, installation, maintenance and updating of computer software in the aeronautical field; rental of computer software in the aeronautical field; scientific and technological services, namely, scientific research, analysis and testing in the aeronautical field; product failure and engineering analysis, and expert reports of engineers, namely, conducting engineering surveys and processing of the acquisition for data recorded during the operation of aircraft engines, modules and components thereof, namely, data-acquisition and collection for calibration and coordinate-measurement purposes” in class 42.
The application is for the mark TURBOX in stylized font with the letter X formed by two sets of parallel lines. The mark is applied to the goods of:
“Cameras; Computer hardware; Computer memory devices; Computer peripheral devices; Computers; Data processing apparatus; Downloadable computer software for editing cinematographic film; Downloadable computer software for word processing; Electronic chips for the manufacture of integrated circuits; Smartglasses; Smartphones; Wafers for integrated circuits; Downloadable computer operating programs; Recorded computer operating programs; Recorded computer operating software” in class 9,
and the services of:
“Advertising services; Business advice and information; Computerized file management; Marketing services; On-line advertising on a computer network; Professional business consultancy; Publicity agency services; Systemization of information into computer databases; Television advertising; Updating and maintenance of data in computer databases” in class 35,
“Communications by computer terminals; Communications by fiber optic networks; Communications by telephone; Computer aided transmission of messages and images; Information about telecommunication; On-line services, namely, message sending; Radio broadcasting; Rental of modems; Rental of telecommunication equipment; Wireless broadcasting” in class 38, and
“Cloud computing featuring software for use in database management; Computer programming; Computer security consultancy; Computer software consultancy; Computer software design; Computer systems analysis; Computer technology consultancy; Consultancy in the design and development of computer hardware; Consulting services in the field of cloud computing; Data encryption services; Data security consultancy; Electronic data storage; Installation of computer software; Maintenance of computer software; Updating of computer software” in class 42.
Similarity 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)); TMEP §1207.01(b).
The marks are identical in sound and meaning, and are comprised of the same word TURBOX.
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)).
Similarity of the Goods and/or Services
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 application and registration use broad wording to describe the goods and services, which presumably encompasses all goods and services of the type described, including those in a more narrow recitation.
Specifically, the applicant’s “data processing apparatus” necessarily includes the registrant’s “Data-processing equipment”; the registrant’s “apparatus for recording, transmitting and reproducing sound, images and/or data” necessarily includes the applicant’s “cameras”, “computer hardware”, “Computer memory devices”, “Computer peripheral devices”, “Computers”, “Data processing apparatus”, “Smartglasses”, and “Smartphones”; and the applicant’s “Maintenance of computer software” and “Updating of computer software” necessarily includes the registrant’s services of “maintenance and updating of computer software in the aeronautical field”. 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 specified goods and services 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)).
Conclusion
Because the marks are identical in sound and meaning, and highly similar in and commercial impression, and the goods and services are legally identical in part, confusion is highly likely in this case. Thus, registration must be refused for a likelihood of confusion with the mark in U.S. Registration No. 4287277.
Option to Overcome Refusal
Applicant may overcome the refusal by deleting the specified legally identical goods and services from the application.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
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
Shanoski, Joanna
/Joanna M Shanoski/
Examining Attorney- Law Office 104
E-mail: Joanna.Shanoski@uspto.gov
Phone: (571) 272-9707
RESPONSE GUIDANCE