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:  September 12, 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• U.S. Counsel Required

 

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. 3859411, 3244495, 2778432, 4713098, 4713097, and 3729686.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applied-for mark is CIMC for “Reflecting discs for wear, for the prevention of traffic accidents; Reflective safety vests; Safety products, namely, reflective helmet skirts; Safety products, namely, reflective safety bands to be worn on the body” in International Class 9.

 

The registered marks are held by the same owner and are as follows:

·         Registration No. 4713098, CIMC MODULAR BUILDING SYSTEMS, with design and disclaimer for MODULAR BUILDING SYSTEMS, for “Trucks; fork lift trucks; refrigerated vehicles; bodies for vehicles; cars; mobile storage tanks; aerial conveyors; structural parts of ships, namely, bridge approach for ascending plane; boats; motor homes” in International Class 12.

·         Registration No. 4713097, CIMC MODULAR BUILDING SYSTEMS, with design and disclaimer for MODULAR BUILDING SYSTEMS, for “Containers of metal for chemicals, compressed gases and liquids; Containers of metal for transport; Floating metal docks; Metal containers for the storage and transportation of goods; Metal marine hardware, namely, thimbles; Metal pipes and metal fittings therefor; Metal shelf brackets; Transport pallets of metal; Transportable buildings of metal; Transportable metal constructions” in International Class 6.

·         Registration No. 3244495, CIMC, stylized, for “Fork lift trucks; trailers; automobiles; automobile chassis; motorcycles; funicular railcars; structural parts for airplanes; boats; boat hooks” in International Class 12.

·         Registration No. 3729686, CIMC SGIL, stylized, for “Containers of metal for transport; Materials of metal for railway construction; Metal hardware, namely, springs; Metal nuts; Metal pipes; Metal ropes; Metal storage tanks and roofs therefor; Mooring bollards of metal; Portable metal buildings; Steel alloys” in International Class 6.

·         Registration No. 3859411, CIMC, stylized, for “Containers of metal for chemicals, compressed gases and liquids; Containers of metal for transport; Floating metal docks; Free-standing metal panel units for exhibitions, displays and partitioning; Loading and unloading pallets of metal; Metal containers for the storage and transportation of goods; Metal hardware, namely, springs; Metal trim for buildings; Modular metallic buildings; Portable metal buildings.” in International Class 6.

·         Registration No. 2778432, CIMC, with design for “automobile chassis, vehicle trailers, namely, trailers for transporting land vehicles; trailer hitches for vehicles; tractors; trucks; trolleys; fork lift trucks; vehicle vans” in International Class 12. 

 

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).  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.

 

Similarity of the Marks

 

First, 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).

 

Similarity to the Marks in Registration Nos. 4713098 and 4713097

 

In this case, the marks create a substantially similar commercial impression because the most distinctive literal element in each of registrant’s marks, the acronym CIMC, is identical to the applied-for mark. Thus, the marks are similar in terms of appearance and sound. Further, neither the applied-for or registered marks indicate that CIMC has a specific meaning. Thus, the marks are similar in terms of meaning. Thus, the applied-for mark is confusingly similar to registrant’s marks.

 

Further, the additional wording and design in the registered marks are unlikely to obviate the likelihood of confusions because the identical acronym CIMC is the dominant element of the registered marks. 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). In this case, registrant has disclaimed the wording MODULAR BUILDING SYSTEMS in both of the registrations because the wording is highly descriptive of the identified goods. Because this wording is descriptive, consumers will look to the acronym CIMC to identify the source of registrant’s “MODULAR BUILDING SYSTEMS.”

 

Further, the additional of a minor design element in the registered marks does not obviate confusion in this case. 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)). As discussed above, the word portions of the applied-for and registered marks are identical in part. Thus, confusion is likely as to the source of the goods when consumers are discussing the goods at issue.

 

Similarity to the Marks in Registration Nos. 3244495 and 3859411

 

In this case, the marks are virtually identical. The applied-for mark is CIMC and the registered marks are CIMC. Thus, the marks are identical in terms of sound. Further, neither the applied-for or registered marks indicate that CIMC has a specific meaning. Thus, the marks are similar in terms of meaning. Finally, because the marks are spelled identically, they are highly similar in terms of appearance. The minor stylization in the applied-for and registered marks does not alter the overall impression of the marks. Thus confusion is likely.

 

Similarity to Registration No. 3729686

 

In this case, the applied-for mark CIMC is identical to the first portion of the registered mark, CIMC SGIL. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, confusion is likely in this case because the applied-for mark is identical to the first portion of the registered mark. The shared acronyms in the marks renders the marks similar in terms of sound and appearance. And, neither the applied-for or registered marks indicate that CIMC has a specific meaning. Thus, the marks are similar in terms of meaning. Thus, confusion is likely.

 

Similarity to the Mark in Registration No. 2778432

 

In this case, the word portion of the marks, the acronym CIMC, is identical. Thus, the marks are identical in terms of sound. Further, neither the applied-for or registered marks indicate that CIMC has a specific meaning. Thus, the marks are similar in terms of meaning. Finally, because the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

For the forgoing reasons, the marks are confusingly similar.

 

Relatedness of the Goods

 

Next, 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).

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 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).

 

The applied-for mark is CIMC for “Reflecting discs for wear, for the prevention of traffic accidents; Reflective safety vests; Safety products, namely, reflective helmet skirts; Safety products, namely, reflective safety bands to be worn on the body” in International Class 9.

 

Applicant’s goods are related to Registrant’s International Class 6 goods.

 

In this case, applicant’s reflective safety clothing including vests discs, helmet skirts and safety bands, are highly related to registrant’s goods identified in International Class 6, in particular: Containers of metal for transport; Floating metal docks; Metal containers for the storage and transportation of goods; Metal pipes and metal fittings therefor; Metal shelf brackets; Transport pallets of metal; Metal hardware, namely, springs; Metal nuts; Metal pipes; Metal ropes; Steel alloys; Loading and unloading pallets of metal. The attached Internet evidence, consisting of screenshots from Global Industrial, Ferguson, and Best Materials, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See http://www.globalindustrial.com/p/storage/bins-totes-containers/bulk/relius-solutions-mini-bulk-containers-10-cu-ft-wire-mesh-sides; http://www.globalindustrial.com/p/safety/clothing/hi-visibilty-vests/global-industrial-class-2-hi-vis-safety-vest-2-silver-strips-polyester-solid-lime-size-l-xl; http://www.ferguson.com/category?Ntt=vest&searchKeyWord=vest; http://www.ferguson.com/category/pipe-tubing/_/N-zbq41r?icid=mrch_fly_prod_pipe-tubing; http://www.bestmaterials.com/reflective-ansi-safety-vests-487.html; http://www.bestmaterials.com/SearchResult.aspx?CategoryID=1466; http://www.bestmaterials.com/galvanized-roof-pipe-flashing-638.html.  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).

 

Applicant’s goods are related to Registrant’s International Class 12 goods.

 

Further, applicant’s reflective safety clothing including vests discs, helmet skirts and safety bands, are highly related to registrant’s goods identified in International Class 12, in particular: trucks, tractors, fork-lift trucks, and conveyors. The attached Internet evidence, consisting of screenshots of Caterpillar, Bobcat, and Global Industrial products, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See http://catworkwear.com/products/flame-resistant-hivis-5-point-safety-vest; http://www.cat.com/en_US/products/new/equipment/off-highway-trucks.html; http://www.cat.com/en_US/products/new/equipment.html; http://www.bobcat.com/index; http://www.norscotsites.com/BobcatStore/Dealership-Event/High-Visibility-Vest_3; http://www.bobcat.com/index; http://www.globalindustrial.com/c/material-handling/conveyors. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. 

 

For the forgoing reasons, the marks create substantially similar commercial impressions and the goods are related such that they are likely to be encountered in the marketplace by the same consumers. Therefore, registration of the applied for mark is refused based on Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

U.S. COUNSEL REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019)  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information. 

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, 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).

 

ASSISTANCE

 

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  

 

 

/Rebecca Eubank/

Rebecca Eubank

Examining Attorney

Law Office 116

571-270-5577

rebecca.eubank@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 September 12, 2019 for

U.S. Trademark Application Serial No. 88480797

 

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. 

 

 

/Rebecca Eubank/

Rebecca Eubank

Examining Attorney

Law Office 116

571-270-5577

rebecca.eubank@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 September 12, 2019, 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.”