Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 13, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 28, 2020.

 

In a previous Office action dated August 30, 2019 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:  amend the identification of goods.

 

Upon further review of the applicant’s arguments and amendments, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods

 

I.                   SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

AS NOTED BELOW, THE IDENTIFICATION OF GOODS HAS BEEN REVERTED TO THE ORIGINAL FORM SINCE THE PROPOSED AMENDMENT EXCEEDED THE SCOPE OF THE ORIGINAL IDENTIFICATION.  TMEP §1402.07(d).

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3137959.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

The applicant has applied for LIGHTSPEED (standard character form) for “fiber optic cables, connectors, signal converters, signal extenders and accessories for the transmission of sounds images, and data over fiber optics; cables, namely, high definition multimedia interface cables and coaxial cables; cables for the transmission of sounds and images; cables for electrical or optical signal transmission; connectors, namely, electrical connectors; cable connectors.” 

 

U.S. Registration No. 3137959 is the mark LIGHTSPEED (standard character form) which has been registered for “Electrical and electromagnetic signal transmitting, amplifying, receiving, and converting devices, namely, audio cables, audio cable connectors, audio wires, video cables, video cable connectors, video wires.”

 

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).  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 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. 

 

A.    Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b) (v). 

 

In the present case, applicant’s mark is “LIGHTSPEED” and registrant’s mark is also “LIGHTSPEED” both of which are in standard character form.  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 and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

B.     Comparison of the Goods

 

The compared goods 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] 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).

 

In this case, the applicant and registrant’s goods are highly similar in terms of their nature, use, and marketing channels.  For instance, the applicant listed in the identification of goods that it will provide “fiber optic cables, connectors, signal converters, signal extenders and accessories for the transmission of sounds images, and data over fiber optics; cables, namely, high definition multimedia interface cables and coaxial cables; cables for the transmission of sounds and images; cables for electrical or optical signal transmission; connectors, namely, electrical connectors; cable connectors.” 

 

Registrant provides “Electrical and electromagnetic signal transmitting, amplifying, receiving, and converting devices, namely, audio cables, audio cable connectors, audio wires, video cables, video cable connectors, video wires.”

 

As an initial matter, several entries in the application and registration appear to be overlapping and or encompass each other.  For instance, registrant’s audio cables, audio cable connectors, audio wires, video cables, video cable connectors, video wires significantly overlap with and/or are legally identical to applicant’s “fiber optic cables, connectors, signal converters, signal extenders and accessories for the transmission of sounds images, and data over fiber optics; cables, namely, high definition multimedia interface cables and coaxial cables; cables for the transmission of sounds and images; cables for electrical or optical signal transmission.” 

 

The attached Internet evidence, consisting of industry websites like Home Depot (GE), Extron, Cables for Less, and Newegg (Belkin) and the previously attached evidence from Tripp-Lite, FS, and C2G, establishes that the same entity commonly provides the relevant fiber optic and audio and video cable goods and markets the goods under the same mark.  Thus, applicants and registrant’s goods and/or 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). 

 

Applicant contends that the goods of the parties differ, but fails to address the significant overlap and highly related nature, use, and marketing channels of the goods as shown by the evidence discussed above.  Furthermore, even if the applicant’s goods and registrant’s were different in nature or use, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

As such, the evidence discussed above demonstrates that the goods in the application and registration are highly similar, particularly with respect to the nature of goods, use of the goods, and marketing channels involved.  Since the marks are confusingly similar and the goods are related, there is a likelihood of confusion as to the source of the respective goods.  Therefore, applicant’s mark is not entitled to registration.

 

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

 

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

 

II.                IDENTIFICATION OF GOODS

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a) (6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “fiber optic cables, connectors, signal converters, signal extenders and accessories for the transmission of sounds images, and data over fiber optics; cables, namely, high definition multimedia interface cables and coaxial cables; cables for the transmission of sounds and images; cables for electrical or optical signal transmission; connectors, namely, electrical connectors; cable connectors.”

 

However, the proposed amendment identifies the following goods:  “fiber optic cables; connectors, couplers, enclosures, and SFP modules, all for use with fiber optic cables; fiber optic accessories.” 

 

This portion of the proposed amendment is beyond the scope of the original identification because “connectors, couplers, enclosures and SFP modules” are not clearly within the scope of  “accessories for the transmission of sounds images, and data over fiber optics” since the applicant has omitted the qualifying wording “for the transmission of sounds images, and data over fiber optics”.  Similarly, applicant’s separate entry for “fiber optic accessories” is also unqualified by the wording “for the transmission of sounds images, and data over fiber optics”.  To bring the applicant’s current identification within the scope of the original submission, the applicant may adopt the wording suggested below.

 

Additionally, the applicant’s reference to “couplers, enclosures, and SFP modules” and “fiber optic accessories” are indefinite as to the nature of the goods provided and thus require further clarification.  See 37 C.F.R. §2.32(a) (6); TMEP §1402.01.  For instance, “couplers” could refer to “acoustic couplers” and “optical couplers” as well as “data processing equipment in the nature of couplers.”  Similarly, the wording “enclosures” could refer to “speaker enclosures” or “home networking hardware enclosures.”  The wording “connectors” “SFP modules” and “fiber optic accessories” are likewise indefinite since the specific type of goods provided by the applicant are still unclear.

 

Applicant may substitute the following wording, if accurate:

 

International Class 009

 

fiber optic cables; fiber optic connectors, optical couplers, home networking hardware enclosures, and SFP modules in the nature of transceivers, all for use with fiber optic cables, and all for the transmission of sounds images, and data over fiber optics; fiber optic accessories, namely, fiber optic light and image conduits, all for the transmission of sounds images, and data over fiber optics

 

See TMEP §1402.01.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 March 13, 2020 for

U.S. Trademark Application Serial No. 88457316

 

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. 

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 March 13, 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.”