To: | UNIFORM INDUSTRIAL CORP. (mailroom@bskb.com) |
Subject: | U.S. Trademark Application Serial No. 88570511 - UIC - 5386-0218US1 |
Sent: | November 12, 2019 04:02:37 PM |
Sent As: | ecom127@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88570511
Mark: UIC
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Correspondence Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 GATEHOUSE ROAD, SUITE 100E
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Applicant: UNIFORM INDUSTRIAL CORP.
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Reference/Docket No. 5386-0218US1
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: November 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5630908. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Here, applicant’s mark is UIC for “Card readers, namely, contactless card readers; Hybrid card readers; Magnetic stripe readers; Integrated circuit card readers; Magnetic stripe card writers and magnetic stripe card encoders; Magnetic stripe card decoder IC; Decoder integrated circuits; Personal identification number (PIN) entry pads devices; Readers for personal identification number (PIN) entry devices; Electrical apparatus and instruments, namely, mobile telephones, smart card readers, and proximity payment processing devices all using near field communication technology for facilitating commercial transactions through electronic means via wireless network, global computer network and mobile telecommunication device; Smart card readers; Cheque readers; Counter-top systems, namely, point of sale payment terminals; Personal identification number (PIN) entry pads devices; Mobile personal identification number (PIN) entry pad devices; Web-based mobile point of sale terminals; Electronic signature pads; Computer peripheral devices; Barcode readers; Software for processing electronic payments; Scanners; Computer printers for printing documents; Portable point of sale payment terminal systems; Unattended point of sale payment terminal systems” in International Class 9.
The registrant’s mark is UIC for “Design and development of software for embedded devices; research and development of technical standards in the fields of embedded technology and IoT interfaces; development of voluntary standards for embedded technology, embedded devices and IoT interfaces” in International Class 42.
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.
1. 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).
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)).
Therefore, in this case, although both marks contain design elements, the word portions are dominant over the design. The wording in applicant’s mark is UIC and the wording in the registrant’s mark is UIC. 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’s and registrant’s respective goods and/or services. Id.
Accordingly, the marks are confusingly similar.
2. Relatedness of the Goods/Services
In this case, the registrant offers “design and development of software for embedded devices,” and the applicant offers the embedded devices and software itself, namely, “card readers, namely, contactless card readers; Hybrid card readers; Magnetic stripe readers; Integrated circuit card readers; Magnetic stripe card writers and magnetic stripe card encoders; Magnetic stripe card decoder IC; Decoder integrated circuits; Personal identification number (PIN) entry pads devices; Readers for personal identification number (PIN) entry devices; Electrical apparatus and instruments, namely, mobile telephones, smart card readers, and proximity payment processing devices all using near field communication technology for facilitating commercial transactions through electronic means via wireless network, global computer network and mobile telecommunication device; Smart card readers; Cheque readers; Counter-top systems, namely, point of sale payment terminals; Personal identification number (PIN) entry pads devices; Mobile personal identification number (PIN) entry pad devices; Web-based mobile point of sale terminals; Electronic signature pads; Computer peripheral devices; Barcode readers; Software for processing electronic payments; Scanners; Computer printers for printing documents; Portable point of sale payment terminal systems; Unattended point of sale payment terminal systems.”
Based on the analysis above, the applicant’s and registrant’s goods/services are related.
3. Conclusion
Because applicant’s and registrant’s marks are similar and the goods/services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
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(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION REQUIREMENT
Applicant has identified the following goods:
International Class 9: “Card readers, namely, contactless card readers; Hybrid card readers; Magnetic stripe readers; Integrated circuit card readers; Magnetic stripe card writers and magnetic stripe card encoders; Magnetic stripe card decoder IC; Decoder integrated circuits; Personal identification number (PIN) entry pads devices; Readers for personal identification number (PIN) entry devices; Electrical apparatus and instruments, namely, mobile telephones, smart card readers, and proximity payment processing devices all using near field communication technology for facilitating commercial transactions through electronic means via wireless network, global computer network and mobile telecommunication device; Smart card readers; Cheque readers; Counter-top systems, namely, point of sale payment terminals; Personal identification number (PIN) entry pads devices; Mobile personal identification number (PIN) entry pad devices; Web-based mobile point of sale terminals; Electronic signature pads; Computer peripheral devices; Barcode readers; Software for processing electronic payments; Scanners; Computer printers for printing documents; Portable point of sale payment terminal systems; Unattended point of sale payment terminal systems”
The wording “card readers; cheque readers” in the identification of goods is indefinite and must be clarified because applicant must specify that the card readers and “check” readers are electronic. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Similarly, the wording “point of sale payment terminals” is indefinite and must be clarified, because applicant must specify that they are used for making contactless payments. The wording “software for processing electronic payments” is indefinite and must be clarified, because applicant must specify that the software is downloadable. Non-downloadable software belongs in International Class 42. Finally, applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “Personal identification number (PIN) entry pads devices.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language in bold for clarity:
International Class 9: “Card readers, namely, electronic
contactless card readers; Hybrid electronic card readers; Magnetic strip readers; Integrated circuit card readers; Magnetic strip
card writers and magnetic strip card encoders; Magnetic strip card decoder IC; Decoder integrated circuits; Personal identification number (PIN) entry pads
devices; Readers for personal identification number (PIN) entry devices; Electrical apparatus and instruments, namely, mobile telephones, smart card readers, and proximity payment processing devices
all using near field communication technology for facilitating commercial transactions through electronic means via wireless network, global computer network and mobile telecommunication device;
Smart card readers; electronic check readers; Counter-top systems, namely, point of sale payment terminals for making contactless payments; Personal
identification number (PIN) entry pads devices; Mobile personal identification number (PIN) entry pad devices; Web-based mobile point of sale terminals for making contactless
payments; Electronic signature pads; Computer peripheral devices; Barcode readers; downloadable software for processing electronic payments; Scanners; Computer printers for
printing documents; Portable point of sale payment terminal systems for making contactless payments; Unattended point of sale payment terminal systems for
making contactless payments”
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.
Response guidelines. 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.
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
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@uspto.gov
RESPONSE GUIDANCE