| To: | Palomar Products, Inc. (pctrademarks@perkinscoie.com) |
| Subject: | U.S. Trademark Application Serial No. 88442040 - PALOMAR - 27329-9254 |
| Sent: | August 13, 2019 02:39:14 PM |
| Sent As: | ecom105@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
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. 88442040
Mark: PALOMAR
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Correspondence Address:
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Applicant: Palomar Products, Inc.
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Reference/Docket No. 27329-9254
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 13, 2019
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.
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.
IDENTICAL NATURE OF THE MARKS
In the present case, applicant’s mark is ICE CREAM SOCIAL and registrant’s mark is ICE CREAM SOCIAL. 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 they 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.
Therefore, the marks are confusingly similar.
SIMILAR NATURE OF THE GOOD AND SERVICES
In this case, the goods and/or services in the application and registration are highly similar, if not identical based in large measure on the broad wording in the registration as to the intended and expected use of the products and associated services. Specifically, Applicant’s goods and services are identified as:
Class 9 – Voice and data switching hardware and software; secure communications management hardware and software, namely, analog or digital switching hardware, user digital control units, command digital control units, network switching hardware, and software for use in military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; audio, data and video distribution computer hardware and software for defense and commercial applications; secure communications devices, namely, computer chips for data, video and audio encryption, computer devices for encryption of data, video and audio, computer systems providing separate channels for clear and secure communications, devices for control and relay of voice, data and video to radio, crypto, modem, intercom, and sensor controls, in the nature of analog or digital switching devices, networking switching devices, and/or signal switching systems; communications switches, jackboxes, switchboxes for helmet communication systems, headsets for use by ground crews and dismounted persons, and headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships; speakers and audio amplifiers
Class 37 – Repair and maintenance of voice, data and video communications and secure voice data and video communications hardware, network hardware and software for others; repair and maintenance of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms
Class 40 – Custom manufacturing of voice, data and video communications and secure voice data and video communications hardware, network hardware and software for others; custom manufacturing of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; custom manufacturing of communications equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; custom manufacturing of secure communications devices, namely, audio control devices, liquid crystal displays, integrated panels and communications control equipment; custom manufacturing of communications switches, jackboxes, speakers and audio amplifiers, headsets for use by ground crews and dismounted persons, and headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships
Class 42 – Custom design of communication and secure communication hardware, software and networks for others; engineering of voice, data and video communications and secure voice data and video communications hardware, software and networks for others; engineering of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; engineering of communications equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; engineering of secure communications devices, namely, audio control devices, liquid crystal displays, integrated panels and communications control equipment, communications switches, jackboxes, and speakers and audio amplifiers, and headsets for use by ground crews and dismounted persons; headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships
Meanwhile, Registrant’s goods are identified as: Amplifier for wireless communications; amplifiers; microphones for communication devices; radio receivers and transmitters; radio transceivers; radio transmitters; radio transmitters and receivers; transceivers
Based on the wording in the applicant and registration, some of the items in class 9 are identical. Courts have consistently held that 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 its products in that it does not limit the intended purpose or industry, which presumably encompasses all channels of trade and markets, including applicant’s more narrow “military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships”. 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 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 registrant’s goods and/or services are related.
As stated previously, the goods or services need not be identical to find a similarity therein and a likelihood of confusion to consumers, but rather that they be related in some manner. In this case, the parties’ goods and services have highly similar, if not identical, purposes and functionality. As a result, contemporaneous use of the goods and services is likely to engender confusion in consumers.
Conclusion
Based on the above analysis, registration of the applied-for mark is refused pursuant to Section 2(d) of the Lanham Act.
Please see additional basis for refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4059788 and 4059791. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations owned by the same entity.
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.
The test for determining likelihood of confusion is the same for certification marks – the du Pont analysis. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007)); see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). However, because a certification mark owner does not use the mark itself, the likelihood of confusion analysis is based on a comparison of the mark as applied to the goods and/or services of the certification mark users, including the channels of trade and classes of purchasers. In re Accelerate s.a.l., 101 USPQ2d at 2049 (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d at 1559-60); see also Jos. S. Cohen & Sons Co. v. Hearst Magazines, Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
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).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In this case, the examining attorney believes that the marks are highly similar. Specifically, Applicant’s mark is PALOMAR, while Registrant’s marks are PALOMAR TECHNOLOGIES (Reg. No. 4059788) and PALOMAR TECHNOLOGIES ASSEMBLY SERVICES (Reg. No. 4059791). In essence, Applicant’s mark incorporates the dominant portion of the registered marks in its entirety and merely deletes the disclaimed and descriptive matter. For the reasons set forth below, these changes do not avoid a finding that the marks are similar.
In addition, merely omitting some element from a registered mark, in this case the disclaimed elements, 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). 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 and/or services 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).
Courts have consistently held that marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In this case, the marks all include the term PALOMAR, which wholly incorporates the entirety of the literal elements in Applicant’s mark. The addition of the descriptive wording in the registered marks is not sufficient to differentiate the marks to any appreciable degree.
As a result, since the marks have highly similar overall look and feel and will sound similar when pronounced by consumers, the marks create a similar overall commercial impression.
SIMILAR NATURE OF THE GOOD AND SERVICES
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
The goods and/or services 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).
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
In this case, the goods and/or services in the application and registration are highly similar, if not identical based in large measure on the broad wording in the registration as to the intended and expected use of the products and associated services. Specifically, Applicant’s goods and services are identified as:
Class 9 – Voice and data switching hardware and software; secure communications management hardware and software, namely, analog or digital switching hardware, user digital control units, command digital control units, network switching hardware, and software for use in military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; audio, data and video distribution computer hardware and software for defense and commercial applications; secure communications devices, namely, computer chips for data, video and audio encryption, computer devices for encryption of data, video and audio, computer systems providing separate channels for clear and secure communications, devices for control and relay of voice, data and video to radio, crypto, modem, intercom, and sensor controls, in the nature of analog or digital switching devices, networking switching devices, and/or signal switching systems; communications switches, jackboxes, switchboxes for helmet communication systems, headsets for use by ground crews and dismounted persons, and headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships; speakers and audio amplifiers
Class 37 – Repair and maintenance of voice, data and video communications and secure voice data and video communications hardware, network hardware and software for others; repair and maintenance of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms
Class 40 – Custom manufacturing of voice, data and video communications and secure voice data and video communications hardware, network hardware and software for others; custom manufacturing of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; custom manufacturing of communications equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; custom manufacturing of secure communications devices, namely, audio control devices, liquid crystal displays, integrated panels and communications control equipment; custom manufacturing of communications switches, jackboxes, speakers and audio amplifiers, headsets for use by ground crews and dismounted persons, and headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships
Class 42 – Custom design of communication and secure communication hardware, software and networks for others; engineering of voice, data and video communications and secure voice data and video communications hardware, software and networks for others; engineering of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; engineering of communications equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; engineering of secure communications devices, namely, audio control devices, liquid crystal displays, integrated panels and communications control equipment, communications switches, jackboxes, and speakers and audio amplifiers, and headsets for use by ground crews and dismounted persons; headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships
Meanwhile, Registrant’s services are identified as: Assembly of products for others in class 40; and Custom design and engineering of product assembly processes in class 42.
Based on the broad wording in the registration, the examining attorney must assume that Registrant’s services could include the assembly, design and engineering of products identical to those of Applicant. As stated previously, courts have consistently held that 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 at 1307.
In this case, the registrations use broad wording to describe the products it produces through its services, which presumably could encompass all of the products identified in the application. 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 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)).
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 registrant’s goods and/or services are related.
Again, the presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).
As stated previously, the goods or services need not be identical to find a similarity therein and a likelihood of confusion to consumers, but rather that they be related in some manner. In this case, the parties’ goods and services have highly similar, if not identical, purposes and functionality. As a result, contemporaneous use of the goods and services is likely to engender confusion in consumers.
Conclusion
Based on the above analysis, registration of the applied-for mark is refused pursuant to Section 2(d) of the Lanham 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.
Informalities
IDENTIFICATION OF GOODS AND SERVICES
As identified below, some of the wording in the identification of goods and services must be clarified to identify the common commercial name of the product or service associated with the mark. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
The wording could include goods in other international classes for which additional filing fees are required.
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services. In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Applicant must address the following issues and may adopt the suggested language, if accurate:
Please note that the suggested language is underlined.
Class 9 –computer hardware and downloadable or recorded computer software for voice and data switching; secure communications management computer hardware, namely, analog or digital switching hardware, user digital control units, command digital control units, network switching hardware, and associated downloadable or recorded computer software for use in military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; computer hardware and downloadable or recorded computer software for audio, data and video distribution for defense and commercial applications; secure communications devices, namely, computer chips for data, video and audio encryption, computer hardware and peripheral devices for encryption of data, video and audio, computer systems in the nature of ___________ (Applicant must further specify what is meant by systems, e.g. hardware, downloadable computer software.) providing separate channels for clear and secure communications; electronic devices for control and relay of voice, data and video to radio, crypto, modem, intercom, and sensor controls, in the nature of analog or digital switching devices, networking switching devices, and/or signal switching systems; automatic communications switching apparatus, jackboxes, namely ___________ (Applicant must further specify what are jackboxes.), switchboxes for helmet communication systems, headsets for use by ground crews and dismounted persons, and headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships; audio speakers and audio amplifiers
Class 37 – Repair and maintenance of voice, data and video communications and secure voice data and video communications hardware, network hardware and computer software for others; repair and maintenance of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms
Class 40 – Custom manufacturing of voice, data and video communications and secure voice data and video communications hardware, network hardware; custom manufacturing of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; custom manufacturing of communications equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; custom manufacturing of secure communications devices, namely, audio control devices, liquid crystal displays, integrated panels and communications control equipment; custom manufacturing of communications switches, jackboxes namely ___________ (Applicant must further specify what are jackboxes.), speakers and audio amplifiers, headsets for use by ground crews and dismounted persons, and headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships
Class 42 – Custom design of communication and secure communication hardware, computer software and computer networks for others; engineering of voice, data and video communications and secure voice data and video communications hardware, computer software and computer networks for others; engineering of voice, data and video equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; engineering of communications equipment for military, defense and commercial applications for manned and unmanned aerial vehicle, aircraft, ground vehicle, ground station, air-to ground station, and shipboard platforms; engineering of secure communications devices, namely, audio control devices, liquid crystal displays, integrated panels and communications control equipment, communications switches, jackboxes namely ___________ (Applicant must further specify what are jackboxes.), and audio speakers and audio amplifiers, and headsets for use by ground crews and dismounted persons; headsets for use with military, defense and commercial manned and unmanned aerial vehicles, aircraft, ground vehicles, ground stations and ships; developing customized computer software for others for use with voice, data and video communications and secure voice data and video communications hardware, network hardware
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
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.
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
/Alain Lapter/
Trademark Examining Attorney
Law Office 105
571-272-3162
alain.lapter@uspto.gov
RESPONSE GUIDANCE
