To: | Universal Lighting Technologies, Inc. (edl@iplawgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88505988 - UNIVERSAL LIGHTING TECHNOLOGIES - 020904 |
Sent: | October 03, 2019 03:08:28 PM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88505988
Mark: UNIVERSAL LIGHTING TECHNOLOGIES
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Correspondence Address: |
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Applicant: Universal Lighting Technologies, Inc.
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Reference/Docket No. 020904
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: October 03, 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.
Here, applicant has applied to register the mark UNIVERSAL LIGHTING TECHNOLOGIES in standard characters for “Electrical, electronic, and mechanical ballasts, controls, devices, drivers, sensors, switches, and transformers in the nature of lighting products and electrical equipment for signs, displays, controllers, equipment, apparatuses, and systems for use with all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon; Electrical capacitors and wire for use with all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon; Computer software for controlling lighting and lighting control systems” in Class 9 and “Lighting products, namely, bulbs, lamps, fixtures, light sources, lamp holders, lighting fixtures, lamp tubes, and light bulbs for all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon” in Class 11. The mark in Registration No. 3573103 is UNIVERSAL LIGHTING SYSTEMS in standard characters for “Lighting fixtures” in Class 11. The mark in Registration No. 5578711 is UNIVERSAL DEVICES in standard characters for “Home and office automation systems comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications; Industrial automation controls; Computer hardware and software system for remotely monitoring environmental conditions and controlling devices within a building, facility, grounds, or designated spatial area” in Class 9. And the mark in Registration No. 4883459 is UNIVERSAL EFFECTS in standard characters for goods and services including “Apparatus and installations for lighting and ventilation, namely, electric light fixtures and electric fans; machines and installations for lighting effects, namely, electric light fixtures” in Class 11.
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).
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). Here, Registration No. 3573103 has disclaimed the wording LIGHTING SYSTEMS, Registration No. 4883459 has disclaimed the word EFFECTS, Registration No. 5578711 has disclaimed the word DEVICES, and, as described in the Disclaimer Required section of this Office action, below, applicant must disclaim the wording LIGHTING TECHNOLOGIES. Thus, the word UNIVERSAL is the dominant portion of all of these marks for likelihood of confusion purposes, and therefore, the marks are all highly similar in sound and appearance.
Moreover, the marks all convey the same commercial impression, as UNIVERSAL LIGHTING TECHNOLOGIES, UNIVERSAL LIGHTING SYSTEMS, UNIVERSAL EFFECTS, and UNIVERSAL DEVICES could be viewed as separate products or lines of products within the same UNIVERSAL brand. Therefore, the differences between the marks do not obviate the similarities between the marks, as the marks convey an overall similar commercial impression.
Because the marks look and sound similar and create the same commercial impression, they are considered similar for likelihood of confusion purposes.
Relatedness of Goods
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)).
In this case, the goods in the application and Registration No. 3573103 are identical in part. Specifically, Registration No. 3573103’s “lighting fixtures” are identical to applicant’s “lighting fixtures.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. 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)).
Additionally, the application uses broad wording to describe its “lighting fixtures,” which presumably encompasses all goods of the type described, including Registration No. 4883459’s more narrow “electric light fixtures.” 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 Registration No. 4883459’s goods are legally identical in part. 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)).
Furthermore, 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)).
Moreover, applicant’s “computer software for controlling lighting and lighting control systems” is a component of Registration No. 5578711’s “home and office automation systems comprising…software for lighting.” Also, the attached Internet evidence from Acuity Brands, Philips, GE Lighting, Kichler, and Wikipedia establishes that the same entity commonly provides both applicant’s lighting products, lighting software, bulbs, lamps, and fixtures, as well as Registration No. 3573103 and 4883459’s lighting fixtures, and markets the goods under the same mark. Thus, applicant’s and registrants’ 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).
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark must be refused under Section 2(d) of the Trademark Act.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Additionally, the wording “lighting products and electrical equipment” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes, such as “lighting fixtures” in Class 11 or “electrical drills” in Class 7. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. If applicant intended for this language to reference the items that came before it, (that is, the ballasts, controls, devices, drivers, sensors, switches, and transformers), applicant must make this clear.
Furthermore, the wording “wire for use with all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes, such as “wire of common metal” in Class 6 or “electrical wire” in Class 9. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. If applicant intended for the word “electrical” before “capacitors” to also modify this term, applicant must make this clear.
Also, the wording “Computer software for controlling lighting and lighting control systems” in the identification of goods for International Class 9 is indefinite and too broad and must be clarified to specify whether the format of the software is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
Moreover, the wording “Lighting products, namely,…fixtures” in the identification of goods for International Class 11 is indefinite and must be clarified because it does not specify the nature of the lighting fixtures, such as “infrared lamp fixtures” or “lighting fixtures.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 9: Electrical, electronic, and mechanical lighting products and electrical equipment in the nature of lighting ballasts, lighting controls, lighting devices for taking pictures, LED drivers, motion sensors for security lights, light switches, and transformers for signs, displays, controllers, equipment, apparatuses, and systems for use with all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon; Electrical capacitors and electrical wire for use with all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon; Downloadable computer software for controlling lighting and lighting control systems
Class 11: Lighting products, namely, light bulbs, lamps, lighting fixtures, lanterns for lighting, lamp holders, lighting fixtures, lamp tubes, and light bulbs for all types of lights and lighting including fluorescent, gas discharge, halogen, HID, incandescent, LED, and neon
Class 42: Providing online nondownloadable computer software for controlling lighting and lighting control systems
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.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 9 and 11; and applicant needs a specimen for class 42. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording LIGHTING TECHNOLOGIES because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster dictionary shows that LIGHTING means “an artificial supply of light or the apparatus providing it,” and TECHNOLOGIES means “a manner of accomplishing a task especially using technical processes, methods, or knowledge.” Moreover, the attached evidence from AMP, Century, and the U.S. Department of Energy shows this wording is commonly used in connection with similar lighting products to mean technical advancements in the lighting industry. Thus, the wording merely describes applicant’s goods and/or services because applicant is providing the technical equipment to accomplish the task of providing an artificial light supply. In fact, applicant’s identification of goods states that it is providing “lighting products…for use with all types of lights and lighting,” “computer software for controlling lighting and lighting control systems,” and “lighting products, namely…lighting fixtures…for all types of lights and lighting.” (Emphasis added).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LIGHTING TECHNOLOGIES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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.
ASSISTANCE
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
/Maureen Reed/
Examining Attorney
Law Office 115
571-272-0851
maureen.reed@uspto.gov
RESPONSE GUIDANCE