To: | Shanghai Sansi Electronic Engineering Co ETC. (trademarkgroup@oliff.com) |
Subject: | U.S. Trademark Application Serial No. 88540157 - SRLEDS - 187935 |
Sent: | January 16, 2020 10:51:17 AM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88540157
Mark: SRLEDS
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Correspondence Address:
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Applicant: Shanghai Sansi Electronic Engineering Co ETC.
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Reference/Docket No. 187935
Correspondence Email Address: |
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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: January 16, 2020
This Office action is in response to applicant’s communication filed on January 7, 2020.
In a previous Office action dated October 24, 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 advised that the Identification of Goods contained duplicate entries and a typo.
Based on applicant’s response, the trademark examining attorney notes that the following issue has been satisfied: the Identification of Goods Contained Duplicate Entries and a Typo. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal 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
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.
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).
In this case, the marks create substantially similar commercial impressions because the applied-for mark, SRLEDS, and the registered marks, SR-SERIES and SR CERTIFIED all share the dominant element SR.
The likelihood of confusion is not negated even though the applied-for mark contains the additional wording LEDS, nor because the registered marks contain the words CERTIFIED and SERIES. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
First, in regards to LEDS and SERIES, the wording is, at best, descriptive. Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). Here, LEDS in the applied-for mark refers directly to the generic term light emitting diodes (LEDS). Further, SERIES refers to a number of things in the same class coming one after another. See attached evidence from Merriam-Webster. The wording SERIES is commonly used on products to refer to a class of products. The fact that wording is not disclaimed does not negate the descriptiveness of the wording itself.
Additionally, CERTIFIED in Registration No. 5440389 is descriptive and has been disclaimed. 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).
While applicant asserts that LEDS sufficiently distinguishes its mark from the registered marks, this ignores that all of the marks share the dominant SR element. As stated above, LEDS, SERIES, and CERTIFIED all describe the goods provided by the respective parties.
Applicant argues that because the applied-for mark is stylized as SRLEDS, the mark is unitary and thus a coined term. However, this ignores that LEDS in the applied-for mark is readily recognizable to consumers as referring to the generic term for applicant’s goods, various light emitting diodes (LEDS), as discussed above. Similarly, if applicant had applied for SRLIGHTS or SRLAMPS, the lack of a space does not negate that the words LIGHTS and LAMPS respectively have meanings and would be recognized as such.
Applicant also argues that the marks sound different. While true that the marks contain additional wording that is different in sound, this wording is descriptive at best, for the reasons stated above. Contrary to applicant’s arguments, SR is dominant in both the applied-for mark and the registered marks. Applicant also discusses various ways the applied-for mark could be pronounced, however, the applied-for mark could clearly be read as either “SR LEDS” or “S R LEDS” by consumers and thus confused with the registered marks which share the dominant element, SR.
Finally, applicant discusses at length various ways the marks evoke different meanings. Descriptiveness is considered in relation to the relevant goods. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). Thus, regardless of whether the descriptive wording has other meanings, the wording is still descriptive. Again, however, the SR portion of the mark is dominant in both the applied-for mark and registered marks. Thus, additional, descriptive wording does not significantly distinguish the marks.
In sum, SR is the dominant element of both the applied-for mark and the registered marks, and is the part of the mark consumers are most likely to focus on and remember to identify source. Further, as the marks are used in connection with similar goods, the marks are likely to engender similar connotations and overall commercial impressions.
Therefore, the marks are confusingly similar.
Similarity of the Goods
In this case, the application uses broad wording to describe “lighting fixtures” and “light installations for vehicles”, which presumably encompasses all goods of the type described, including the more narrow light bars for vehicles in Registration Nos. 4656412 and 4253770 and the various light fixtures and apparatus in Registration No. 5440389. 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 registrants’ respective 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)). Applicant’s remaining goods are all related as various types of lighting fixtures/devices.
Additionally, the goods 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 registrants’ respective goods are related.
Therefore, upon encountering the applied-for mark and the registrants’ respective marks for substantially similar goods, consumers are likely to be confused and mistakenly believe that the applicant’s goods and the registrants’ respective goods emanate from a common source or are otherwise connected in some way. Accordingly, the Section 2(d) Refusal is made FINAL.
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 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).
/Luke Cash Browning/
Luke Cash Browning
Trademark Examining Attorney
Law Office 127 | (571) 270-5767
Luke.Browning@USPTO.gov
RESPONSE GUIDANCE