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. 88501744
Mark: GO
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Correspondence Address: |
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Applicant: Gogoro Inc.
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Reference/Docket No. N/A
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: September 30, 2019
Prior-Filed ApplicationS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Section 2(d) Refusal – Likelihood of Confusion – partial refusals
The stated refusals refer to the goods and services specified below and do not bar registration for the applicant’s other goods and services. In addition, please note that citations may be added or withdrawn depending on applicant’s amendment to the identification of goods and services.
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.
Comparison 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).
Applicant’s mark is “GO” in stylized form with a design element.
The mark in Registration No. 3419515 is “GO” in stylized form with a design element.
The mark in Registration No. 4100954 is “GO” in standard character form.
The mark in Registration No. 4283198 is “GO” in standard character form.
The mark in Registration No. 4488728 is “GO” in standard character form.
The mark in Registration No. 4779979 is “GO” in stylized form.
The mark in Registration No. 5226975 is “GO” in standard character form.
The sole wording in applicant’s mark is “GO” and the sole wording in registrants’ marks is “GO”. Thus, the wording in these marks is identical in appearance, sound, and meaning, “and [has] 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 their wording is identical, applicant’s mark is likely to engender the same connotation and overall commercial impression as registrants’ marks when considered in connection with the respective goods and/or services. Id.
Further, the stylization and/or design element(s) in applicant’s mark and the stylized registered marks are less significant for purposes of likelihood of confusion, as the word portion of a mark 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)).
Finally, with respect to the registered marks in standard character form, these marks may be displayed in any lettering style, as the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element, like applicant’s mark, generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Accordingly, applicant’s mark is confusingly similar to registrants’ marks.
Comparison of the Goods/Services
Applicant identifies the following goods and services of relevance to this action:
Class 9: … wires, electric; software applications, downloadable; computer software applications, downloadable; mobile phone applications; simulators for the steering and control of vehicles; … navigation apparatus for vehicles; … mileage recorders for vehicles; speed checking apparatus for vehicles; credit cards; integrated circuit cards; smart cards
Class 12: Electric cars; electric vehicles; … Automobiles; … remote control vehicles, other than toys; panniers adapted for motorcycles; saddle covers for motorcycles; … motorcycle parts and components; motors, electric, for land vehicles; motors for land vehicles; bodies for vehicles ….
Class 39: … vehicle transport; carting; passenger transport; … cargo transportation; unloading cargo; wrapping of goods; delivery of goods; … freight forwarding; traffic information; transport and storage of waste; towing of traffic vehicles.
Registration No. 3419515 identifies the following services:
Class 39: Transportation of passengers and/or goods by buses, automobiles, and vans.
Registration No. 4100954 identifies the following goods and services of relevance to this action:
Class 9: Computer hardware and software for use with navigation systems, route planners, electronic maps and digital dictionaries for navigation and translation purposes; software for use with satellite and GPS navigation systems for navigation purposes; software for travel information systems for the provision and rendering of travel advice and information concerning service stations, car parks, restaurants, car dealers and other travel and transport related information; software for information management for the transport and traffic industries; software to be used for viewing electronic maps; downloadable electronic maps; software for operating route planners; route planners in the nature of hand-held personal computers; software for operating electronic digital dictionaries; electronic digital dictionaries; location, orientation, and navigation sensors, transmitters, actuators, cameras and global positioning systems, namely, GPS consisting of computers, computer software, transmitters, GPS and satellite receivers, network interface devices, connection cables and parts and fittings thereof, holders for pocket personal computers; satellite and radio transmission processors and receivers; telecommunications installations, networks and apparatus, namely, mounting racks for telecommunications hardware, telecommunications switches; computer terminals, all in particular to be used with navigation systems, route planners and digital maps; blank magnetic and disc shaped data carriers; audio and video apparatus, namely, audio and video receivers and processors; hand held personal computers; personal digital assistants
Class 39: Secured and unsecured telecommunications services, namely, electronic storage of digital data, light files, sound files, data, information and image signals all in particular for navigation systems, route planners and the use of electronic maps.
Registration No. 4283198 identifies the following goods:
Class 12: Vehicle seats and integrated accessories and components therefor, namely, arm rests, leg rests, cushions, recliner mechanisms, fold-away mechanisms, flip seat mechanisms, seat belts, grab handles, map pockets, snack trays, cup holders, hooks and tethers, fold-down tables, jacks and outlets.
Registration No. 4488728 identifies the following goods:
Class 9: Computer software for computer system and application development, deployment and management, and user manuals and documentation sold as a unit therewith, but excluding computer software, user manuals and documentation for use in connection with navigation systems, travel information systems, route planners, electronic maps, digital dictionaries for navigation and translation purposes, or to provide geographical, map image, and trip routing data.
Registration No. 4779979 identifies the following goods:
Class 12: Automobiles; electric automobiles; fuel cell automobiles; engines for land vehicles, not including their parts; drive shafts, axles and spindles for land vehicles; axle bearings for land vehicles; shaft couplings and connectors for land vehicles; power transmissions and gearings for land vehicles; shock absorbers for land vehicles; springs for land vehicles; brakes for land vehicles; AC motors and DC motors for land vehicles, not including their parts.
Registration No. 5226975 identifies the following goods:
Class 9: Downloadable mobile applications for mixed reality, augmented reality, and virtual reality books.
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)).
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)).
In this case, the following goods and services in the application are identical to, encompass, or are encompassed by the respective goods and/or services in the registrations:
Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, these goods and services of applicant are related to these goods and/or services of the registrants.
However, 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).
See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Accordingly, applicant’s goods and services are related to registrants’ goods and/or services under Section 2(d) of the Trademark Act.
Conclusion
For the reasons discussed above, registration is refused under Section 2(d) of the Trademark Act.
(1) Deleting the goods and/or services to which the refusal pertains; or
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition/registration for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
However, if applicant responds to the refusals, applicant must also address the requirement set forth below.
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
The identification of goods and services must be clarified because portions of it are indefinite and/or overbroad, as further explained below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. To clarify this wording applicant must amend the identification to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the goods and/or services have no common commercial or generic name, applicant must describe or explain the nature of the goods and/or services using clear and succinct language. See id.
If referring to goods and services in the following classes, applicant may adopt the following identification, if accurate:
Class 9: Batteries; accumulators, electric; batteries, electric, for vehicles; accumulators, electric, for vehicles; battery chargers; chargers for electric accumulators, namely, {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., rechargers for electric accumulators for vehicles}; chargers for electric accumulators for vehicles, namely, {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., rechargers for electric accumulators for vehicles}; electronic key fobs being remote control apparatus; charging station for electric cars; battery jars; wires, electric; computer software applications for use on mobile phones, downloadable, {indicate function of software, e.g., for renting and charging electric vehicles, etc. and, if software is content- or field-specific, the content or field of use}; computer software applications, downloadable, {indicate function of software, e.g., for renting and charging electric vehicles, etc. and, if software is content- or field-specific, the content or field of use}; mobile phone applications, namely, downloadable computer software applications for use on mobile phones {indicate function of software, e.g., for renting and charging electric vehicles, etc. and, if software is content- or field-specific, the content or field of use}; simulators for the steering and control of vehicles; {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., protective} helmets; automatic indicators of low pressure in vehicle tires; navigation apparatus for vehicles; voltage regulators for vehicles; mileage recorders for vehicles; speed checking apparatus for vehicles, namely, {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., speed indicators for vehicles}; {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., magnetically encoded} credit cards; {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., encoded} integrated circuit cards {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., containing programming used to recharge electric vehicles}; {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., encoded} smart cards {specify common commercial name of goods in Class 9 and/or further specify nature and/or purpose of goods in Class 9, e.g., containing programming used to recharge electric vehicles}
Class 12: Electric cars; electric vehicles, namely, {specify common commercial name of goods in Class 12 and/or further specify nature and/or purpose of goods in Class 12, e.g., electric cars, electric motorcycles, and electric bicycles}; motorcycles; mopeds; Automobiles; electric bicycles; bicycles; remote control {specify common commercial name of goods in Class 12 and/or further specify nature and/or purpose of goods in Class 12, e.g., land} vehicles, other than toys; panniers adapted for motorcycles; saddle covers for motorcycles; side view mirrors for vehicles; {specify common commercial name of goods in Class 12 and/or further specify nature and/or purpose of goods in Class 12, e.g., fitted covers for vehicles}, namely, vehicle covers shaped to fit vehicles; {specify common commercial name of goods in Class 12 and/or further specify nature and/or purpose of goods in Class 12, e.g., land vehicle parts}, namely, motorcycle windshields; motorcycle parts and components, namely, {specify common commercial name of goods in Class 12 and/or further specify nature and/or purpose of goods in Class 12, e.g., structural parts for motocycles}; motors, electric, for land vehicles; motors for land vehicles; bodies for vehicles; anti-theft devices for vehicles; wheelchairs; tricycles {specify common commercial name of goods in Class 12 and/or further specify nature and/or purpose of goods in Class 12, e.g., not being toys}
Class 39: Distribution of energy; energy supplying services, namely, {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., distribution of energy}; electricity distribution; electricity supplying, namely, {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., distribution of electricity}; pipeline conveyance of electric power nature and/or purpose of services in Class 39, e.g., distribution of electricity by pipeline}; car rental; vehicle rental; vehicle transport, namely, {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., transportation of vehicles}; carting services, namely, {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., transport of waste}; passenger transport; rental of warehouses; warehousing; cargo transportation, namely, {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., transportation of goods}; unloading cargo; wrapping of goods, namely, {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., packaging articles for transportation}; delivery of goods; parking place rental; freight forwarding; traffic information; transport and storage of waste; {specify common commercial name of services in Class 39 and/or further specify nature and/or purpose of services in Class 39, e.g., vehicle towing services}, namely, towing of traffic vehicles
Stylized text indicates changes.
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. See TMEP §1402.04.
advisory – Multi-Class Application Requirements
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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
/Matthew Tully/
Matthew Tully
Trademark Examining Attorney
Law Office 105
(571) 270-5943
RESPONSE GUIDANCE
