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:  December 06, 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:

• Advisory: Prior Pending Applications
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods and Services Requirements
• Multi-Class Application Requirements

 

ADVISORY: PRIOR PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 79155382, 86344288, 87225265, 88466812, 88466818, 88466826, and 88599435 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1104727, 4929521, 4545698, 4766290, 4541197, 3991863, 4915883, 1432737, 1815765, 3399983, 5431013, 3080115, 3080116, 3092446, 3188016, and 4686949.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant has applied to register the mark HYUNDAI in stylized form for “3D TV; Access control cards (encoded or magnetic); Access control installations (Automatic -); Access control systems (Automatic -); Access control systems (Electric -); acoustic (sound) alarms; alarming apparatus; alarms; alkaline batteries; anti-theft warning apparatus; audio and video receivers; audio speakers; audiovisual receivers; BABYSITTER MONITOR; batteries for automobile; batteries for ups/inverter; battery charge devices; battery chargers; Biometric device for access control; Biometric fingerprint scanners; Biometric hand scanners; Biometric identification apparatus; Biometric identification device for time and attendance management; Biometric information reader; Biometric readers; Biometric retinal scanners; Biometric scanners; Biometric security apparatus; Bluetooth Head/Earphone; Bluetooth Speakers; BLU-RAY PLAYER; BOOM BOX; burglar alarms; BURGLAR AND FIRE ALARM SYSTEM; button cell; cameras for cctvs; cameras for vehicles; car navigations; CAR SPEAKER; car televisions; car video recorders; cases for mobile phones; cctv for monitor; cd players; Charger for Mobile phone; cinematographic machines and apparatus; communications apparatus for aircrafts; communications apparatus for vehicles; computer game software; computer software for unmanned aircrafts; contact lens; devices for hands-free use of mobile phones; devices for wireless radio transmission; digital cameras; digital doorlock; digital information display (did); digital pens for computer; DIGITAL PHOTO FRAME; digital signage; Digital Video Recorder (DVR); digital voice recorders; direction finders; dry cells; dry cells (batteries); Dust protective goggles and masks; dvd players; Earphones; electric accumulators; electric accumulators for vehicles; electric arc cutting apparatus; electric batteries; electric cables and cable reel for home and garden use; electric hair curlers; electric irons; electric lighting notice boards; electric locks; electric metal cutting machines; electric metal cutting machines (by arc, gas or plasma); electric sockets; electric switches; ELECTRIC WEATHER STATION; electric welding mask; electrical and electronic burglar alarms; electrical equipment arc cutting; electronic agendas; electronic blackboard; electronic digital signboard; electronic display; electronic indicator panels; electronic notice boards; electronic pens; electronic photocopiers; electronic picture frame; electronic pocket translators; equipments for component analysis; EXTENSION CODE; Face identification device for time and attendance management; Face recognition device for access control; FEATURE PHONES; Fingerprint identification device for time and attendance management; Fingerprint sensors for access control; fire alarms; global positioning systems (gps) apparatus; gps; hand scanner; head cleaning tapes recording; Headphones; high tension batteries; high-pass terminals; home theater system; intercoms system; Interphones; inverters (electricity); Iris scanner for access control; Iris scanner for access control and time and attendance management; karaoke machines; keyboards for mobile phones; Kitchen scales; LASER DETECTOR; LASER DISTANCE METER; LASER LEVEL; laser level measuring apparatus; laser range finders; lcd tv; LED TV; LICENSE PLATE RECOGNITION SYSTEM; lithium batteries; measuring apparatus; meteorological machines and apparatus; Microphones; Mifi (Novatel Wireless portable devices) for mobile WiFi connection; mobile telephone batteries; mobile telephones; Modems; MONITOR FOR CCTV; mounting devices for cameras and monitors; mp3 players; mp4 players; MULTI TAB; Multivision; network communication installations; Network Video Recorder; ni cd rechargeable batteries; ni mh rechargeable batteries; nickel-cadmium storage batteries; oled tv; OUTLET; PDP TV; personal digital assistants (pdas); personal stereos; Personal weighting scale; Phablet; phone case and stand for mobile phones; photographic apparatus and instruments; phototelegraphy apparatus; photovoltaic cells; Portable chargers/Power bank; portable communications apparatus; portable media players; portable rechargers; portable telephones; power bank; POWER STRIP; PROJECTION TV; Projectors; Protective clothing; Protective ear plugs; Protective eyeglasses; Protective face-shields for protective helmets; Protective film for Mobile accessory; protective masks for welding; Protective shoes; radar installations; Radios; radiotelephony sets; RANGEFINDER; readers (data processing equipment); rearview cameras for vehicles; receivers and transmitters of signals; receivers for satellites; record players; remote control apparatus; remote control apparatus for cameras; remote control apparatus for human access control; remotely-controlled cameras; sensor lights; set-top boxes; smart cards; smart chargers; smart glasses; smart pad; smart phones; smart tv; Smartphone data cables; smoke sensors; solar batteries; sound recording apparatus and instruments; Speakers; spectacles (optics); SPIRIT LEVEL; Stand and Holder for Mobile accessory; starter and ballast for lamp; starter for lighting apparatus; tablet computers; telephone sets; Telescopes; television monitors; television receivers; television receivers (tv sets); television transmitters; Televisions; terminal for electronic books; terminal for electronic newspaper; terminal for electronic publications; terminal for electronic study books or papers; terminals for radiotelephones; T-flash card (Micro Secure Digital High Capacity card) for mobile phone use; Thermometers; touch pads; transmitters of electronic signals; TURNTABLE; tv remote controls; uhd tv; ups (uninterrupted power supply) apparatus; usb (universal serial bus) memories; VCR PRODUCTS; vehicle radios; Vein identification device for time and attendance management; Vein recognition device for access control; video cameras (camcorders); video game cards; video recorders; video recording apparatus for vehicles; video telephones; video wall; Virtual Reality (VR) Headsets; vrla batteries; walkie-talkies; wearable unmanned aerial cameras; welding equipment arc; welding helmets; welding machine; welding masks; wet cells batteries; Wire/wireless doorlock apparatus for access control; wire_(electrical); wireless access point (wap) devices; wireless speakers; x-ray apparatus not for medical purposes; zinc carbon battery; zinc chloride batteries” in international class 009.

 

The registrants own the following marks:

 

·         HYUNDAI AUTRON as a design mark – Reg. No. 4929521 for “Traction vehicles, namely, tractors, material handling tractors; tipping apparatus, namely, mechanically assisted self-contained insert dump units installed in trucks and wagons, unloading tipplers for tilting railway freight cars; light lorries; dashboards; mine-car pullers; mine-car pushers; mine cart wheels; refrigerated vehicles; dump cars; lifting cars; anti-theft devices for motor cars; motor car doors; sun shields and visors for motor cars; motor car seats; wheel rims for motor cars; motor car windows; chains for motor cars; motor car convertible tops; land vehicle parts, namely, anti-skid tire chains; rearview mirrors; vans; motor buses; ladder trucks; side cars; cycle cars; sprinkling trucks; light trucks; amphibious vehicles; scooters vehicles; sports cars; passenger cars automobiles; passenger automobiles for more than 7 passengers; ambulances; carrier tricycles; motorized tailgates for land vehicles; motor homes; two-wheeled motor vehicles; automobile door handle; air bags; windscreen wipers; hoods for automobiles; air pumps for automobiles; luggage nets for automobiles; direction signals for automobiles; anti-glare devices for automobiles, namely, sun visors, sun shields, windshield visors; vehicle parts, namely, rearview mirrors; bumpers for automobiles; automobile bodies; automobile chassis; luggage racks for motor cars; elevating tailgates for trucks or SUVs; seat covers for automobiles; vehicle windscreens; car safety seats for children; cigar lighters for automobiles; automobile spare wheel holders; steering wheels for automobiles; automobile running boards; automobile roof racks; undercarriages for automobiles; automobile wheels; sun-blinds adapted for automobiles; torsion bars for automobiles; automobile hoods; reversing alarms for automobiles; wheels for automobiles; mudguards for automobiles; head rests for seats for motor cars; balances weights for automobile wheels; automobile wheel spokes; armored vehicles; electric cars; snow plough cars; steering wheel covers; fork lift trucks; ski carriers for vehicles; safety belts for vehicle seats; covers for vehicle steering wheels; spoke clips for vehicle wheels; caps for wheel rims; bands for wheel hubs; garbage hauling trailers; sleeping cars; camping cars; cars for cable transport installations; concrete mixing vehicles; tank lorries; trailers; pickup trucks; headlight wipers; lorries; mudguards for trucks; shock absorbing springs for motor cars; land vehicle suspension parts, namely, coil springs; rail antishocking materials for vehicles; shock absorbing springs for vehicles; spring-assisted hydraulic shock absorbers for vehicles; land vehicle suspension parts, namely, air springs; suspension shock absorbers for vehicles; shock absorbing springs for vehicles; laminated leaf-springs for vehicles; shock absorbers for automobiles; buffers for railway rolling stock; suspension shock absorbers for vehicles; brakes for motor cars; brake linings for motor cars; brake shoes for motor cars; brake segments for motor cars; disk brakes for vehicles; band brakes for vehicles; brakes for vehicles; brake facings for vehicles; brake linings for vehicles; brake shoes for vehicles; brake systems for vehicles; braking systems for vehicles and parts thereof; brake segments for vehicles; block brakes for vehicles; conical brakes for vehicles; non-skid devices for vehicle tires, namely, anti-skid studs, chains, and textile covers for vehicle tires; band brakes for land vehicles; block brakes for vehicles; brake pads for automobiles; braking devices for vehicles, namely, brake calipers, brake cylinders, brake hardware, brake rotors, brake lines; automobile engines; gas turbines for land vehicles; air turbines for land vehicles; motive power machines for land vehicles; ramjet engines for land vehicles; hydraulic turbines for land vehicles; compressed air engines for land vehicles; engines for land vehicles; steam engines for land vehicles; steam turbines for land vehicles; propulsion mechanisms for land vehicles, namely, motors and engines for land vehicles; turbojet engines for land vehicles; turbo prop engines for land vehicles; turbines for land vehicles; gear lever knobs for land vehicles; reduction gears for land vehicles; land vehicle parts, namely, rubber drive belts, rubber transmissions belts; driving chains for land vehicles; gears for land vehicles; gear boxes for land vehicles; power transmissions and gearings for land vehicles; roller chains for land vehicles; parts for steering and suspension systems for land vehicles, namely center links; transmissions for land vehicles; connectors for land vehicles, namely, universal joints, shaft couplings; transmission belts for land vehicles; transmission chains for land vehicles; transmission shafts for land vehicles; crankcases for land vehicle components other than for engines; clutches for land vehicles; torque converters for land vehicles; transmissions for land vehicles; transmission mechanisms for land vehicles; leather belts for land vehicles; reversing gears for land vehicles; gears for vehicles; rear wheel sprockets; wheel sprockets; wheel, axle and shaft bearings for land vehicles; land vehicle parts, namely, axles; couplings for land vehicles; axle journals for land vehicles; trailer couplings; alternating current (ac) motors for land vehicles; driving motors for land vehicles; motors for land vehicles; servomotors for direct current (dc) motors for land vehicles” in International Class 012, and “Cam shafts for land vehicles; cam chains for land vehicles; cam sprockets for land vehicles” in International Class 007.

 

·         HYUNDAI KEFICO in stylized characters – Reg. No. 4545698 for “Air flow sensors; throttle position sensors; manifold vacuum sensors; manifold temperature sensors; crankshaft position sensors; camshaft position sensors; knocking sensors for engines; fuel-oxygen ratio sensors for land vehicle engines; pressure sensors for fuel tanks; acceleration sensors; speed sensors for automatic transmission; oil temperature sensors; inhibitor switch for automatic transmission; water level sensors; hydrogen gas sensors for land vehicle engines; electronic controlling devices for land vehicle engines, batteries and power trains; power controllers; cruise controls for motor vehicles; automatic liquid-level control machines and instruments; automatic liquid-flow control machines and instruments; electrical controllers; electrical controlling devices; electrical controls for hybrid vehicle batteries; electrical control cables; voltage measuring device for cell stack; apparatus for intercepting electric power for land vehicle engines; integrated electronic controllers for engines and transmissions in land vehicles; solenoid valves; electronic controlling throttle valves for controlling gas or fluids; solenoid valves for automatic transmission; electronic controllers for engine fuel injectors; electronic controllers for land vehicle transmissions; electronic vaporizer; electronic position sensors; electronic speed sensors; electronic air flow sensors; electronic knock controller for engines; electronic idle speed controller for engines; resistance measuring devices; brake controllers; electronic exhaust gas controllers for engines; pressure measuring sensor for vehicles; fuel tank pressure sensor for vehicles; position sensors of throttle valves for vehicles; oxygen sensor for vehicles; acceleration sensor for vehicles; knock sensor for vehicles; crank position sensor for vehicles; camshaft sensor for vehicles; current sensor for vehicles; steering angle sensors; tire pressure sensor; conductive sensor of fuel cells” in International Class 009.

 

·         HYUNDAI KEFICO in stylized characters – Reg. No. 4766290 for “Control mechanisms for engines, namely, exhaust system sensors incorporated as part of internal combustion engines; injectors of fuel; exhaust manifold for internal combustion engines; valves being parts of machines; electronic brakes for machines; hydraulic valve actuators; heat exchangers being parts of machines; fuel pumps for land vehicles; air compressors for vehicles; intake manifolds for land vehicles” in International Class 007.

 

·         HYUNDAI KEFICO in stylized characters – Reg. No. 4541197 for “Structural parts for land vehicles; electronic transmission mechanisms for land vehicles; transmission controls for land vehicles; electronic transmissions for land vehicles; electronic brake apparatus for vehicles; sparkplugs for vehicles; air flow sensors for land vehicles; actuators for land vehicles; catalytic converters for motors and engines in land vehicles; electronic air flow sensor for vehicles; anti-lock brake system for vehicles; land vehicle parts in the nature of wire harnesses, namely, wires, terminals and connectors bundled together to transmit electric power and signals to electric or electronic equipment mounted on the body parts of automobiles” in International Class 012.

 

·         HYUNDAI in standard characters – Reg. No. 1104727 for “carts, trucks and buses” in International Class 012.

 

·         HYUNDAI in stylized characters – Reg. No. 3991863 for “Water pumps for land vehicles; cylinder heads used on engines; pistons for land vehicles; fans for motors and engines; vehicle engine parts, namely, oil coolers; oil filters for land vehicles; vehicle parts, namely, radiator supporting panels; radiator grilles for land vehicles” in International Class 007, and “Bearings for land vehicles, namely, axle bearings, engine bearings, wheel bearings; engines and motors mufflers; clutch covers for land vehicles; transmissions for land vehicles; Disk brakes for land vehicles; rearview mirrors for automobiles; windscreen wipers for automobiles; rubber belts for land vehicles; fuel tanks for land vehicles; wheels for land vehicles; wheel caps for land vehicles; bumpers for automobiles; hoods for automobiles; doors for automobiles; trunk panels for land vehicles; bumpers for land vehicles; door handles for automobiles; aerials for automobiles; horns for automobiles” in International Class 012.

 

·         HYUNDAI AUTRON as a design mark – Reg. No. 4915883 for “Petrol pumps for service stations; self-regulating fuel pumps for service stations; gasoline pumps for gas stations; gas pumps for service stations; fuel dispensing pumps for service stations; lubricating pumps; blowing machines for the compression/exhaustion and transport of gases; air compressors for vehicles; compressed air pumps as garage installations; pneumatic pumps; feed water regulators; compressors for refrigerators; beer pumps, namely, pump machines for the beverage industry; drainage machines; ejectors, namely, sewage pumps; bellows; compressed air machines; compressed air pumps; water pumps for land vehicles, spas, baths, whirlpools, swimming pools, water filtering units; reciprocating compressors for machines; reciprocating vacuum pumps; reciprocating pumps as parts of machines; centrifugal blowers for machines; centrifugal compressors for machines; centrifugal pumps; power operated blowers; vacuum pumps; power operated axial flow blowers; axial flow compressors for machines; axial flow pumps for machines; power operated turbo blowers; turbo compressors for machines; aerators; pumps as parts of machines/engines or motors; pump diaphragms; diffusion pumps; power operated rotary blowers; rotary compressors for machines; rotary vacuum pumps; rotary pumps; power transmission belts for machines/motors and engines used in industrial applications; timing belts for machines/motors and engines used in industrial applications; connecting rods for machines/motors and engines; crankcases for machines/motors and engines; wire reeling machines; belts for machines; machine wheelwork; transmissions for machines; machine fly-wheels; machine wheels; electric control mechanisms for machines/engines or motors; control cables for machines/engines or motors; power transmissions and gearings other than for land vehicles; reels as parts of machines; belts for motors and engines; fan belts for motors and engines; transmission belts not for land vehicles; crank shafts for pumps; shock absorber plungers being parts of machines; dashpot plungers being parts of machines; brakes for industrial machines; pressure reducers as parts of machines; grease rings being parts of machines; grease boxes being parts of machines; filters for motors, engines and pumps; anti-friction bearings for machines; anti-friction pads for machines; bearing brackets for machines; guides for machines being parts of machines; axles for machines; guards being parts of machines; hoods being parts of machines; pulleys being parts of machines; adhesive bands for pulleys; drum brakes being parts of machines; rams, namely, rammer machines; regulators being parts of machines; roller bearings being parts of machines; drain cocks; valves being parts of machines; bearings being parts of machines; ball rings for bearings being parts of machines; ball-bearings for machines; brushes being parts of machines; shuttles being parts of machines; stuffing boxes being parts of machines; pressure valves being parts of machines; pressure regulators being parts of machines; springs being parts of machines; universal joints, namely, machines parts for connecting sliding strips, plates and guides; lubricating pumps; self-oiling bearings being parts of machines; journals being parts of machines; journal boxes; bearings being machine parts for transmission shafts; loom shafts; shaft couplings being parts of machines; cowlings being parts of machines; crank shafts being parts of machines; clack valves being parts of machines; expansion tanks being parts of machines; housings, namely, enclosures for machine parts; mounting hangers adapted for exhaust systems for internal combustion engines; stators being parts of machines; alternating current servo motors; starters for motors and engines; milling grinding motors; electric starter motors; ignition magnetos for engines; electrostatic generators; direct current motors; electrical carbon brushes being parts of machines; generators for wind turbines; semiconductor processing machines” in International Class 007.

 

·         HYUNDAI in stylized form – Reg. No. 1432737 for “computers, printed circuit board assemblies including those for computers, digitizers, semiconductor chips, vehicle phones, vehicle radios, electrical apparatus and instruments” in International Class 009.

 

·         HYUNDAI as a design mark – Reg. No. 1815765 for “computers” in International Class 009.

 

·         HYUNDAI in stylized form – Reg. No. 3399983 for “CDMA (Code Division Multiple Access) phones, GSM (Global System for Mobile Communications) phones, DMB (Digital Multimedia Broadcasting) phones, CRT (Cathode-Ray Tube) TV's” in International Class 009

 

·         HYUNDAI in standard characters – Reg. No. 5431013 for “Desktop computers; notebook computers; tablet computers; computer monitors; printer for computers; keyboard for computers; mouse for computers; blank recordable CD-Rs and DVD-Rs; blank flash memory; blank USB flash drives; Solid State Drive; HDD (Hard Disk Drive); SD (Secure Digital) memory cards; mini SD (Secure Digital) memory cards; micro SD (Secure Digital) memory cards; DRAM (Dynamic Random-Access Memory CARDS); DDR-SDRAM (Double Data Rate Synchronous Dynamic Random-Access Memory CARDS); computer motherboard; computer graphic card” in International Class 009.

 

·         HYUNDAI in stylized form – Reg. No. 3080115 for “Washing machines for floor, washing machines for clothes, power operated grinding machines, power operated mixing cum grinding machines for kitchen use, electric food processors, sewing machines, electric motors for machines; motors for airplanes; motors for boats, pumps for vacuums, pumps for swimming pool, pumps for aquarium, diesel engines for machines, electric generators, generators for land vehicles, mixing machines for the kitchen use, mechanical mixing machines, electrical juicers for the kitchen use; vacuum cleaners; electric and gas lawnmowers; electric and gas trimmers and edgers; electric and gas shredders for gardening and landscaping; electric and gas blowers for gardening and landscaping; electric and gas powered saws, hand-held drills, pile drivers, and sanders; electric grinders for kitchen use; carpet steamers and carpet cleaning machines” in International Class 007, and “Refrigerators, Freezers, Air conditioners, Microwave ovens, Vacuum cleaners, Ice boxes, Hair Dryers; Drying machines for clothes, Drying Machines for commercial use generating hot air, Drying Machines for domestic use generating hot air, Kitchen ranges” in International Class 011.

 

·         HYUNDAI in stylized form – Reg. No. 3080116 for “Washing Machines for floor, Washing Machines for clothes, Power Operated Grinding Machines, Power operated mixing cum grinding machines for kitchen use, Electric food processors, Sewing machines, Electric motors for machines; motors for airplanes; motors for boats, Pumps for vacuums, Pumps for swimming pool, Pumps for aquarium, Diesel engines for machines, Electric generators, Generators for land vehicles, Mixing machines for the kitchen use, Mechanical Mixing Machines, Electrical Juicers for the kitchen use; Vacuum cleaners; Electric and gas lawnmowers; Electric and gas trimmers and edgers; Electric and gas shredders for gardening and landscaping; Electric and gas blowers for gardening and landscaping; Electric and gas powered saws, hand-held drills, pile drivers, and sanders; Electric grinders for kitchen use; Carpet steamers and Carpet cleaning machines” in International Class 007.

 

·         HYUNDAI in standard characters – Reg. No. 3092446 for “welding fluxes, arc welding fluxes” in International Class 001, and “metallic rods and wires for brazing, soldering and welding, arc welding solid metal wires, flux cored arc welding metal wires, CO2 gas arc welding metal wires, inert gas arc welding metal wires, submerged arc welding metal wires” in International Class 006.

 

·         HYUNDAI WELDING in standard characters – Reg. No. 3188016 for “welding fluxes, arc welding fluxes” in International Class 001, and “metallic rods and wires for brazing, soldering and welding, arc welding solid metal wires, flux cored arc welding metal wires, CO2 gas arc welding metal wires, inert gas arc welding metal wires, submerged arc welding metal wires” in International Class 006.

 

·         HYUNDAI WIA I-CUT in stylized form – Reg. No. 4686949 for “Machine tools, namely, boring machines; Metalworking machines; Machine part, namely, toolholders for metalworking machines; Mechanical presses for metalworking; Rolling mills for metalworking; Hydraulic presses for metalworking; Shearing machines for metalworking; Cutting machines for metalworking; Tubing mills for metalworking; Perforating machines for metalworking; Punching presses for metalworking; Planing machines for metalworking; Shaping machines for metalworking; Horning machines for metalworking; Drilling machines; Lapping machines for metalworking; Machining centers; Milling machines; Bending machines for metalworking; Broaching machines for metalworking; Lathes for metalworking; Grinding machines for metalworking; Tapping machines for metal working” in International Class 007.

 

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.

 

A.     Similarity of 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 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).

 

Reg. Nos. 1104727, 5431013, 3092446, 3991863, 1432737, 3399983, 3080115, 3080116:

 

In the present cases, the registrants’ marks are all the HYUNDAI either in standard characters or in minor stylized form. The applicant’s mark is HYUNDAI in stylized form. The applicant’s mark conveys an overall commercial impression that is highly similar to that of the registrants’ marks because of the shared dominant term “HYUNDAI”.  In addition, all of the marks in this comparison are solely comprised of the term HYUNDAI.  While the slight stylization may differ from mark to mark, all of the marks are identical in sound and meaning, and nearly identical in appearance. Therefore, based on the shared term “HYUNDAI”, 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.  Id.

 

Reg. No. 1815765:

 

In this case, the registrant’s mark is HYUNDAI as the literal mark with a small design element. The applicant’s mark is HYUNDAI in stylized form. The applicant’s mark conveys an overall commercial impression that is highly similar to that of the registrants’ marks because of the shared dominant term “HYUNDAI”. The design element with the registered mark merely completes the letters of the term “HYUNDAI” and therefore does not obviate the similarity in this case. Therefore, based on the shared term “HYUNDAI”, 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.  Id.

 

Reg. Nos. 4929521, 4545698, 4766290, 4541197, 4915883, 3188016, 4686949

 

In these cases, the registrants’ marks are HYUNDAI AUTRON as the literal mark with a design, HYUNDAI KEFICO in stylized form, HYUNDAI KEFICO in stylized form, HYUNDAI KEFICO in stylized form, HYUNDAI AUTRON as with the literal mark with a design, HYUNDAI WELDING in standard characters, and HYUNDAI WIA I-CUT in stylized form. For each mark, the first term and dominant element is the mark or the literal elements of the mark is the term HYUNDAI.  The applicant’s mark is HYUNDAI in stylized form. Thus, the applicant’s mark conveys an overall commercial impression that is highly similar to that of the registrants’ marks because of the shared dominant term “HYUNDAI”. While each of the marks has an additional term, these additional terms do not obviate the similarity of the marks in this case because of the dominance of the term “HYUNDAI”, and because applicant’s entire mark fits within each of the registered marks.

 

Therefore, 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.  Id.

 

Therefore, the marks are confusingly similar. 

 

2. Relatedness of the Goods

 

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 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).

 

Applicant’s mark seeks registration for a large array of goods, creating commercial relatedness with the listed registered marks in various ways. The following section shall be broken down in to vehicle goods, technology goods, airplane goods, welding goods, and cutting machine goods.

 

 

In the case of vehicle goods, applicant seeks registration of the applied-for mark for vehicle related goods such as “cameras for vehicles; car navigations; car speakers; car televisions; car video recorders; communications apparatus’ for vehicles; rearview cameras for vehicles; vehicle radios; anti-theft alarms; batteries; and batteries for automobiles.”

 

The cited marks with conflicting vehicle goods are:

 

·         HYUNDAI AUTRON – Reg. No. 4929521 for various automobiles and vehicle accessories including “rearview mirrors; bumpers for automobiles; automobile bodies; automobile chassis; luggage racks for motor cars; seat covers for automobiles; vehicle windscreens; automobile wheels; reversing alarms for automobiles; head rests for seats for motor cars” in International Class 012,

 

·         HYUNDAI KEFICO – Reg. No. 4545698 for various automobile parts and accessories including “electrical controlling devices; electrical controls for hybrid vehicle batteries; electrical control cables; voltage measuring device for cell stack” in International Class 009.

 

·         HYUNDAI KEFICO – Reg. No. 4766290 for various automotive related goods including “Control mechanisms for engines, namely, exhaust system sensors incorporated as part of internal combustion engines; electronic brakes for machines; hydraulic valve actuators; heat exchangers being parts of machines; fuel pumps for land vehicles; air compressors for vehicles” in International Class 007.

 

·         HYUNDAI KEFICO – Reg. No. 4541197 for “Structural parts for land vehicles; electronic transmission mechanisms for land vehicles; transmission controls for land vehicles; electronic transmissions for land vehicles; electronic brake apparatus for vehicles; sparkplugs for vehicles; air flow sensors for land vehicles; actuators for land vehicles; catalytic converters for motors and engines in land vehicles; electronic air flow sensor for vehicles; anti-lock brake system for vehicles; land vehicle parts in the nature of wire harnesses, namely, wires, terminals and connectors bundled together to transmit electric power and signals to electric or electronic equipment mounted on the body parts of automobiles” in International Class 012.

 

·         HYUNDAI – Reg. No. 1104727 for “cars, trucks and buses” in International Class 012.

 

·         HYUNDAI – Reg. No. 3991863 for “vehicle parts, namely, radiator supporting panels; radiator grilles for land vehicles” in International Class 007, and “Bearings for land vehicles, namely, axle bearings, engine bearings, wheel bearings; engines and motors mufflers; clutch covers for land vehicles; transmissions for land vehicles; Disk brakes for land vehicles; rearview mirrors for automobiles; windscreen wipers for automobiles; rubber belts for land vehicles; fuel tanks for land vehicles; wheels for land vehicles; wheel caps for land vehicles; bumpers for automobiles; hoods for automobiles; doors for automobiles; trunk panels for land vehicles; bumpers for land vehicles; door handles for automobiles; aerials for automobiles; horns for automobiles” in International Class 012.

 

·         HYUNDAI AUTRON – Reg. No. 4915883 for various machine parts including “Petrol pumps for service stations; self-regulating fuel pumps for service stations; gasoline pumps for gas stations; gas pumps for service stations; fuel dispensing pumps for service stations; lubricating pumps; blowing machines for the compression/exhaustion and transport of gases; air compressors for vehicles” in International Class 007.

 

The compared services are closely related because they all deal with automobile and their parts and are the types of services that may emanate from a single entity.

 

The attached Internet evidence, consisting of screenshots from BMW, AUDI, and TOYOTA, establishes that the same entity commonly manufactures vehicles, vehicle parts, and vehicle accessories markets the goods.  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)

 

 

 

In the present case, applicant seeks registration of the applied-for mark for wide range of electronic goods including “vehicle radios, mobile telephones, car navigation computers, tablet computers, feature phones, smart phones, video telephones, portable telephones, television monitors.”

 

The cited marks are registered for:

 

·         HYUNDAI – Reg. No. 1432737 for “computers, printed circuit board assemblies including those for computers, digitizers, semiconductor chips, vehicle phones, vehicle radios, electrical apparatus and instruments, SD (Secure Digital) memory cards” in International Class 009.

 

·         HYUNDAI – Reg. No. 1815765 for “computers” in International Class 009.

 

·         HYUNDAI – Reg. No. 3399983 for “CDMA (Code Division Multiple Access) phones, GSM (Global System for Mobile Communications) phones, DMB (Digital Multimedia Broadcasting) phones, CRT (Cathode-Ray Tube) TV's” in International Class 009

 

·         HYUNDAI – Reg. No. 5431013 for “Desktop computers; notebook computers; tablet computers; computer monitors; printer for computers; keyboard for computers; mouse for computers; blank recordable CD-Rs and DVD-Rs; blank flash memory; blank USB flash drives; Solid State Drive; HDD (Hard Disk Drive); SD (Secure Digital) memory cards; mini SD (Secure Digital) memory cards; micro SD (Secure Digital) memory cards; DRAM (Dynamic Random-Access Memory CARDS); DDR-SDRAM (Double Data Rate Synchronous Dynamic Random-Access Memory CARDS); computer motherboard; computer graphic card” in International Class 009.

 

When analyzing an applicant’s and registrant’s goods 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 registrations contain overlapping goods and are thus legally identical.  Therefore, it is presumed that the channels of trade and class 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)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

 

In the present case, applicant seeks registration of the applied-for mark for various machine goods including “communications apparatus for aircrafts, computer software for aircrafts.”

 

The cited marks are registered for the following:

 

·         HYUNDAI – Reg. No. 3080115 for various machine goods including “electric motors for machines; motors for airplanes.”

 

·         HYUNDAI – Reg. No. 3080116 for various machine goods including “electric motors for machines; motors for airplanes.”

 

 The compared services are closely related because they both identify components for airplanes and are the types of services that may emanate from a single entity.

 

The attached Internet evidence, consisting of screenshots from CHIEF AIR CRAFT, SKY GEEK, and AIR CRAFT SPRUCE AND SPECIALTY CO., establishes that airplane motors and aircraft software and communication devices are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods and/or services 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)

 

 

In the present case, applicant seeks registration of the applied-for mark for various welding goods including “welding equipment arcs, welding helmets, welding machines, welding masks, electric arc cutting apparatus, electric metal cutting machines, electrical equipment arc cutting.”

 

The cited marks are registered for the following:

 

·          HYUNDAI – Reg. No. 3092446 for “welding fluxes, arc welding fluxes” in International Class 001, and “metallic rods and wires for brazing, soldering and welding, arc welding solid metal wires, flux cored arc welding metal wires, CO2 gas arc welding metal wires, inert gas arc welding metal wires, submerged arc welding metal wires” in International Class 006.

 

·         HYUNDAI WELDING – Reg. No. 3188016 for “welding fluxes, arc welding fluxes” in International Class 001, and “metallic rods and wires for brazing, soldering and welding, arc welding solid metal wires, flux cored arc welding metal wires, CO2 gas arc welding metal wires, inert gas arc welding metal wires, submerged arc welding metal wires” in International Class 006.

 

·         HYUNDAI WIA I-CUT – Reg. No. 4686949 for “Machine tools, namely, boring machines; Metalworking machines; Machine part, namely, toolholders for metalworking machines; Mechanical presses for metalworking; Rolling mills for metalworking; Hydraulic presses for metalworking; Shearing machines for metalworking; Cutting machines for metalworking; Tubing mills for metalworking; Perforating machines for metalworking; Punching presses for metalworking; Planing machines for metalworking; Shaping machines for metalworking; Horning machines for metalworking; Drilling machines; Lapping machines for metalworking; Machining centers; Milling machines; Bending machines for metalworking; Broaching machines for metalworking; Lathes for metalworking; Grinding machines for metalworking; Tapping machines for metal working” in International Class 007.

 

 

The compared services are closely related because they are all welding goods and are the types of services that may emanate from a single entity.

 

The attached Internet evidence, consisting of screenshots from WELDINGMART, establishes that ESAB, LINCOLN ELECTRIC, and MILLER ELECTRIC all provide welding helmets, welding and metalwork machines, and welding accessories and market those goods under the same mark. Additionally, the screenshots demonstrate that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods and/or services 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)

 

3. Conclusion

 

Therefore, upon encountering HYUNDAI for vehicle related goods, computer electronics, airplane parts, welding equipment, and cutting machines, and HYUNDAI dominant marks for the respective goods, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source or are connected in some way. Accordingly, registration of the applied-for mark is refused pursuant to Section 2(d) of the Trademark 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.

 

However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS OR SERVICES REQUIREMENTS

 

An identification of goods and services must be specific, definite, clear, accurate, and concise. TMEP §1402.01. The identification must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2)  and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To "specify" means to name in an explicit manner.

 

The following entries identified below require amendment because the wording is indefinite and does not explain or provide information regarding the true nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Furthermore, applicant should note the following additional general principles that apply to the Identification of Goods:

 

Software:

 

Software is classified differently if it is downloadable versus the providing the use of non-downloadable software via the internet. Thus applicant must clarify software goods as downloadable, or must reclassify non-downloadable software in to International Class 042 and specify that the software is non-downloadable.

 

The following software items require amending:

 

• “computer game software” – applicant should clarify the identification to either " Downloadable computer game software” in International Class 009, or “providing online computer games” in International Class 041.
• “computer software for unmanned aircrafts” – applicant should clarify the identification to include either Downloadable computer game software for unmanned aircrafts” in International Class 009, or “providing temporary use of on-line non-downloadable software and applications for controlling unmanned aircrafts” in International Class 042.

 

Acronyms Require Complete Terminology:

 

In most circumstances, the full term of an acronym is required for clarity. In some circumstances, additionally language may be required to clarify use. The following terms used acronyms that need to be clarified:

 

• “batteries for ups/inverter” – applicant should clarify the meaning of the acronym “UPS”
• “cameras for cctvs” – applicant should also include the purpose of the closed circuit televisions, for example, “Closed circuit TV systems for security and surveillance, namely, cameras, monitors”.
• “lcd tv”
• “LED tv”
• “ni cd rechargeable batteries”
• “ni mh rechargeable batteries”
• “oled tv”
• “PDP TV”
• “UHD TV”
• “VCR products”
• “vrla batteries”

 

Misspelled Wording:

 

Some of the wording in the identification of goods appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  The following terms appear to be misspelled or the good is unclear:

 

• “Extension code” – applicant should amend to read “extension cords”
• usb (universal serial bus) memories – applicant should amend to read “USB (universal serial bus) memory stick, namely, USB hardware”

 

Third Party Registered Marks in ID:

 

The identification contained registered marks or the plural of registered marks not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

 

Identifications of goods and services should generally be comprised of generic everyday wording for the goods and services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

The following terms require editing based on containing a registered mark:

 

• “Bluetooth head/earphones” - BLUETOOTH is a registered trademark, applicant should amend the identification to “headphones and earphones with wireless communication capabilities”.
• “Bluetooth Speakers” – BLUETOOTH is a registered trademark, applicant should amend the identification to “wireless speakers”.
• “Blu-Ray Player” – BLU-RAY is a registered trademark, applicant should amend the identification to “optical and magneto-optical disc players”
• “Mifi (Novatel Wireless portable devices) for mobile WiFi connection” – MIFI and WIFI are registered trademarks, applicant should amend the identification to “wireless routers” for “MIFI” and “wireless connection” for WIFI.
• “Power bank” – POWERBANK is a registered trademark, applicant should amend the identification to “rechargeable batteries”

 

See the attached U.S. Registration No(s). 2909356 , 2911905 , 2901104 , 3657054 , 2525795, 2523241, 4760464, 4735445, 3772854, 4407261, 4407265, and 3656544. 

 

Singular Language:

 

Additionally, numerous goods were identified using the singular, whereas, since applicant is likely producing multiples of the goods, they should be identified in the plural.

 

Incorrect or Potentially Incorrect Classifications:

 

Some of the goods are classified incorrectly or require more details to determine their appropriate classification.  Applicant must amend the application to classify the goods in the appropriate International Classes.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The following goods are misclassified or require clarifications:

 

• “alarms” – applicant must clarify what the alarm is designed to detect as this impacts its clarification. For instance “alarms for detecting smoke, fire, and gas” are in International Class 009, while “motor vehicle alarm systems” are in International Class 012, and “alarm clocks” are in International Class 014.
• “anti-theft warning apparatus” – applicant should clarify whether these anti-theft devices are for vehicles, which would be classified in International Class 012, or whether they are theft alarms not for vehicles, which would be classified in International Class 009.
• “electric arc cutting apparatus” – applicant should reclassify in International Class 007.
• “electric hair curlers” – applicant must clarify whether these are hand implements and thus “bench vices” in International Class 008, or “electric hair curlers, other than hand implements” in International Class 026 and reclassify as appropriate.
• “electric metal cutting machines” – applicant should reclassify the goods in International Class 007 and clarify the nature of the goods as machine tools, for example, “machine tools, namely, powered machines for cutting or shaping or finishing metals”.
• “electric metal cutting machines (by arc, gas or plasma)” - applicant should reclassify the goods in International Class 007 and clarify the nature of the goods as machine tools, for example, “machine tools, namely, powered machines for cutting metals by arc, gas, or plasma”.
• “network communication installations” – this appears to be a service rather than a good. If this is referring to a good applicant should clarify the nature of the good. Otherwise applicant should reclassify the term to International Class 037, and specify the type of communication equipment being installed, for example, “IC 037: installation of computer networking hardware”.
• “protective earplugs” – applicant should reclassify the goods in to International Class 010, and specify the intended use for the earplugs, for example “ear plugs for protection from noise”.
• “radar installations” – Again, the use of installations makes this term appear as though it’s a service rather than a good; therefore, applicant should clarify whether this is a “radar apparatus” in International Class 009 or the installation of radar systems in International Class 042.
• “thermometers” – thermometers are classified based on their intended use. “meat thermometers” and “thermometers, not for medical use” are classified in International Class 009, while “clinical thermometers”, and “fever thermometers” are classified in International Class 010. Applicant should clarify the type of thermometer intended and classify appropriately.
• “wearable unmanned aerial cameras” – applicant should clarify whether the primary purpose of the good is cameras or an unmanned aerial device such as a drone because “unmanned aerial vehicles with camera accessories” is classified in International Class 012 while “cameras designed to attached to unmanned aerial devices” would belong in International Class 009.
• “welding equipment arc” – applicant should clarify this as an “electric arc welding apparatus” as equipment is overly broad, and then reclassify this in International Class 007.

 

Parenthetical Information:

 

The identification of goods contains parentheses and brackets.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

Unclear Goods

 

Lastly, the following International Class 009 goods are indefinite because they do not make clear what the goods are and require additional wording to clarify the nature of the good:

 

• “access control cards (encoded or magnetic)”; “access control installation (automatic)”; “access control systems (automatic)”; “access control systems (electric)” – This wording makes it unclear what these goods are. Please clarify, for example “access control systems, namely, cards for access control and alarm monitoring systems”
• “alarming apparatus” – applicant should clarify the purpose of the apparatus, for example, “alarm sensors”.
• “babysitter monitor” – applicant should clarify whether the monitors are video monitors or not and whether they are for the purpose of monitoring the baby or the babysitter. For example, “Babysitter video monitors”; “baby monitors”; “video baby monitors”.
• “Biometric device for access control” – Applicant should clarify the purpose of the device, for example, “Biometric identification apparatus for access control”.
• “Biometric identification apparatus” – Applicant must specify the purpose or use of the apparatus, for example, “biometric identification apparatus for unlocking doors”.
• “Biometric security apparatus” - Applicant must specify the purpose or use of the apparatus, for example, “biometric security apparatus for unlocking doors”.
• “cameras for vehicles” – applicant should specify the purpose of the cameras, for example, “Rearview cameras for vehicles”.
• “car navigations” – applicant should specify the nature of the navigation system, for example, “Car navigation computers”
• “CAR SPEAKER” – applicant should specify the purpose of the speakers, for example, “Audio speakers for automobiles”.
• “digital pens for computer” – applicant should specify the purpose of the pens, for examples “digital pens for computers, namely, Pens with conductive points for touch screen devices” or “digital pens for computers, namely, computer cursor control devices, namely, light pens”
• “direction finders” – applicant should clarify what the product is, for example, “Direction finders, namely, directional compasses”.
• “electric lighting notice boards” – applicant should clarify the primary nature of the good first and then include additional features, for example, “Electronic notice boards with lights”.
• “electric weather station” – applicant should specify the nature of the goods, for example, “Electric weather stations, namely, digital weather station instruments”.
• “electronic blackboard” – applicant should specify the interactive technological feature of the blackboard, for example, “Electronic interactive blackboards”.
• “electronic display” – applicant should specify the type of display, for example, “Electronic displays, namely, digital displays”.
• “electronic picture frame” – applicant should clarify the underlying nature of the good, for example, “Digital photo frames for displaying pictures”.
• “equipments for component analysis” – applicant must specify the type of equipment and its purpose, for example, “Component analysis device to detect and diagnose faults for machines”
• “Fingerprint identification device for time and attendance management” – applicant should identify the devices method of identification, for example, “Fingerprint scanners, namely, fingerprint identification device for time and attendance management”
• “Fingerprint sensors for access control” - applicant should identify the devices method of identification, for example, “Fingerprint scanners, namely, Fingerprint sensors for access control”
• “head cleaning tapes {recording}” – applicant should explicitly state the purpose of the tapes, for example, “head cleaning tapes for recording”
• “high-pass terminals” – applicant should state the primary nature of the goods, for example, “Electrical terminal blocks, namely, high- pass terminals”
• “home theater system” – applicant should specify the components of the home theater system to ensure all the components are in International Class 009, for example, “Home theater system comprising dvd players, tv monitor, audio speakers”. If components are from other classes, applicant should list those goods in the appropriate class.
• “interphones” – applicant must specify the intended good using its generic name or using terms to describe what the good does and what its purpose is. For instance, “Telephone apparatus, namely, telephones for intercoms”.
• “Iris scanner for access control” – applicant must clarify what the iris scanner is reading, for instance, “Biometric Iris scanner for access control”
• “Iris scanner for access control and time and attendance management” - applicant must clarify what the iris scanner is reading, for instance, “Biometric Iris scanner for access control and time and attendance management”
• “Kitchen scales” – applicant should specify the nature of the scales as electronic, for example, “Electronic weighing scales for kitchen use”.
• “laser detector” – applicant should specify the purpose or use of the detectors, for instance, Laser detectors for measuring speed”
• “laser distance meter” – applicant should specify the purpose or use of the good as a measuring apparatus, for instance, “Measuring apparatus, namely, laser distance meters”.
• “laser level” and “laser level measuring apparatus” – applicant should identify the primary nature of the product and then identify the purpose, for example, “level gauges using laser” or “ lasers for measuring purposes”
• “license plate recognition system” – application should specify the nature of the product, for example, “license plate recognition systems, namely, cameras that read license plates”
• “lithium batteries” – lithium batteries come in a variety of types, applicant should specify the types of lithium batteries, for example, “Lithium phosphate batteries; Lithium iron phosphate batteries; Lithium ion batteries”.
• “measuring apparatus” – applicant should specify what the apparatus measures, for example, “measuring apparatus for pressure”, “measuring apparatus for temperature and humidity levels in gases and solid substances”, “measuring apparatus for measuring distance”, “measuring apparatus for measuring time”, measuring apparatus for measuring fine dust”
• “Network Video Recorder” – Here, the term network is unclear. Applicant should identify the base of the goods as video recorders, and then expand what is meant by “network”, for example, “Video recorders for use with closed circuit networks”.
• “outlet” – applicant should specify the nature of the outlet, for example, “electrical outlets”
• “portable chargers/power bank” – applicant should specify what is being charged, for example, “portable battery chargers”
• “portable communications apparatus” – applicant should clarify the nature of the good followed by the purpose, for example, portable apparatus for transmission of communication
• “portable rechargers” – applicant should specify the purpose of the recharger, for example, “portable rechargers for electric accumulators”
• “projection TV” – applicant should clarify the nature of the good, perhaps as a screen or a device, for example, “projection screen for tv”.
• “projectors” – applicant should specify what the projector is designed to project, for example, “Projectors, namely projectors for projecting movies, pictures, videos, and photography”
• “protective clothing” – applicant should specify what the clothing is designed to protect against, for instance, Clothing for protection against accidents, irradiation, and fire”.
• “Protective film for Mobile accessory” – applicant should clarify the intended good and its purpose, for example, “Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones and cellular phone accessory charms”.
• “protective shoes” – applicant should specify the intended protective benefit, for example, “shoes for protection against accidents, fire, irradiation”.
• “rangefinders” – applicant should clarify the way in which the rangefinders operate, for example, “laser rangefinders”
• “readers (data processing equipment)” – applicant should clarify the good and specify what is meant to be read by the reader, for example, “Data processing equipment, namely, memory card readers, magnetic strip readers, electronic card readers, flash memory card readers”
• “receivers and transmitters of signals” – applicant should clarify the type of signals being received and transmitted, for example, “transmitters and receivers for satellites, radios, and wireless signals”
• “remote control apparatus” – applicant should specify the intended device, for example, “remote control apparatus for televisions”.
• “remote control apparatus for human access control” – applicant should specify the good, for example, “remote control apparatus for devices that permit human access control”.
• “sensor lights” – applicant should specify the nature of the good, for example, “Light systems comprising light sensors”
• “smart cards” – smart cards are categorized differently based on their contents therefore applicant should specify the intended contents, for examples, “blank smart cards”.
• “smart pad” – the intended good is unclear. Applicant should reword to clarify whether this is a “wireless charging pad for smartphones” or a “tablet”.
• “smart tv” – Applicant should reword to clarify his intended meaning, for example, “internet-ready television”.
• “smartphone data cables” – applicant should reword in to their generic term, for example, “USB cables for cellphones”.
• “smoke sensors” – applicant should identify the primary nature of the good, for example, “safety sensors, namely, smoke detectors”.
• “speakers” – applicant should specify the type of speakers provided, for example, “audio speakers” or “loud speaker system”
• “starter and ballast for lamp” – applicant should identify the primary nature of the good as either a lighting ballast or an igniter, for example, “Lighting ballasts” or “Electric igniters used in connection with ballasts to start discharge lamps”
• “starter for lighting apparatus” – applicant should specify the type of lighting apparatus, for example, “Starters for fluorescent lights”
• “terminal for electronic books”, “terminal for electronic newspaper”, “terminal for electronic publications”, “terminal for electronic study books or papers” – applicant should clarify what is meant by the term “terminal”, for example, “electronic book readers, namely, terminals for electronic books, electronic newspapers, electronic publications, and electronic study books or papers”.
• “T-flash card (Micro Secure Digital High Capacity card) for mobile phone use” – applicant should use the generic name for the goods, for example, “Secure digital (SD) memory cards for mobile phone use”.
• “turntables” – turntables require additional clarification as record players.
• “ups (uninterrupted power supply) apparatus” – This identification requires clarification of the type of power supply, for example, “uninterrupted electrical power supplies apparatus”.
• “Vein recognition device for access control” – For this identification applicant should specify what is being access controlled, for instance, “Vein recognition devices for controlling access to premises”
• “video game cards” – applicant should clarify what the intended product is, for instance, “Memory cards for video game machines”.
• “video wall” – applicant should clarify what the intended product is, for example, “Video monitors, namely, multi monitor systems that create a single image over one wall”
• “welding machine” – applicant should clarify how the machine works, for example, “Gas welding machine”; “electric welding machine”; “metal welding machine”; “laser welding machine”.
• “Wire/wireless doorlock apparatus for access control” – applicant should specify how the apparatus is powered, for instance, “Electronic wireless access control systems for interlocking doors”
• “wireless access point (wap) devices” – applicant should clarify the primary nature of the goods, for example, “Computer hardware, namely, wireless access point (WAP) devices”

 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 007: electric arc cutting apparatus; machine tools, namely, powered machines for cutting metals; machine tools, namely, powered machines for cutting metals by arc, gas, or plasma; electric arc welding apparatus; gas welding machine; electric welding machine; metal welding machine; laser welding machine;

 

International Class 008: Bench vices as hand implements; electric irons;

 

International Class 009: access control systems, namely, cards for access control and alarm monitoring systems; acoustic alarms; alarm sensors; Alarms for detecting smoke; alarms for detecting fire; alarms for detecting; alkaline batteries; theft alarms; audio and video receivers; audio speakers; audiovisual receivers; Babysitter video monitors; baby monitors; video baby monitors; batteries for automobile; batteries for ups/inverter; battery charge devices; battery chargers; Biometric identification apparatus for access control; Biometric fingerprint scanners; Biometric hand scanners; Biometric identification apparatus for unlocking doors; Biometric identification device for time and attendance management; Biometric information reader; Biometric readers; Biometric retinal scanners; Biometric scanners; Biometric security apparatus for unlocking doors; Headphones and earphones with wireless communication capabilities; Wireless speakers; Optical and magneto-optical disc players; boom boxes; burglar alarms; burglar and fire alarms; Closed circuit TV systems for security and surveillance, namely, cameras, monitors; Rearview cameras for vehicles; Car navigation computers; audio speakers for automobiles; car televisions; car video recorders; cases for mobile phones; cd players; chargers for mobile phones; cinematographic machines and apparatus; communications apparatus for aircrafts; communications apparatus for vehicles; Downloadable computer game software; Downloadable computer software for unmanned aircrafts; Contact lenses; devices for hands-free use of mobile phones; devices for wireless radio transmission; digital cameras; digital door locks; digital pens for computers, namely, pens with conductive points for touch screen devices; computer cursor control devices, namely, light pens; digital photo frames; digital signage; Digital Video Recorder ; digital voice recorders; direction finders, namely, directional compasses; dry cells; Dry cells and batteries; Dust protective goggles and masks; dvd players; Earphones; electric accumulators; electric accumulators for vehicles; electric batteries; electric cables and cable reels for home and garden use; Electronic notice boards with lights; electric locks; electric sockets; electric switches; Electric weather stations, namely, digital weather station instruments; electric welding mask; electrical and electronic burglar alarms; electrical equipment arc cutting; electronic agendas; Electronic interactive blackboards; electronic digital signboard; Electronic displays, namely, digital displays; electronic indicator panels; electronic notice boards; electronic pens; electronic photocopiers; Digital photo frames for displaying pictures; electronic pocket translators; Component analysis device to detect and diagnose faults for machines; Extension cords; Face identification device for time and attendance management; face recognition device for access control; Cell phones, not smart phones; fingerprint scanners, namely, fingerprint identification device for time and attendance management; fingerprint scanners, namely, Fingerprint sensors for access control; fire alarms; global positioning systems apparatus; hand scanner; head cleaning tapes for recording; headphones; high tension batteries; electrical terminal blocks, namely, high- pass terminals; home theater system comprising dvd players, tv monitor, audio speakers; intercoms system; telephone apparatus, namely, telephones for intercoms; inverters (electricity); keyboards for mobile phones; electronic weighing scales for kitchen use; laser detectors for measuring speed;  measuring apparatus, namely, laser distance meters; level gauges using lasers; lasers for measuring purposes; range finders using lasers for cameras; range finders using lasers for golf; liquid crystal display televisions; light emitting diodes television; license plate recognition system, namely, cameras that identify license plates; Lithium phosphate batteries; Lithium iron phosphate batteries; Lithium ion batteries; measuring apparatus for pressure; measuring apparatus for temperature and humidity levels in gases and solid substances; measuring apparatus for measuring distance; measuring apparatus for measuring time; measuring apparatus for measuring fine dust; meteorological machines and apparatus; microphones; wireless routers; mobile telephone batteries; mobile telephones; Modems; mounting devices for cameras and monitors; mp3 players; mp4 players; video recorders for use with closed circuit networks; Nickel metal rechargeable batteries; nickel-cadmium storage batteries; Organic light emitting diodes televisions; Electrical outlets; plasma display panel televisions; personal digital assistants; personal stereos; Personal weighing scales; phablets; phone cases and stands for mobile phones; photographic apparatus and instruments; photo-telegraphy apparatus; photovoltaic cells; portable battery chargers; Portable Apparatus for transmission of communication; portable media players; rechargers for electric accumulators; portable telephones; rechargeable batteries; power strips; projection screens for tv; projectors, namely, projectors for projecting movies, pictures, videos, and photography; clothing for protection against accidents, irradiation, and fire; protective eyeglasses; protective face-shields for protective helmets; fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones and cellular phone accessory charms; protective masks for welding; shoes for protecting against accidents, fire, irradiation; radar apparatus; Radios; radiotelephony sets; Laser rangefinders; data processing equipment, namely, memory card readers, magnetic strip readers, electronic card readers, flash memory card readers; rearview cameras for vehicles; transmitters and receivers for satellites, radios, and wireless signals; receivers for satellites; record players; remote control apparatus for televisions; remote control apparatus for cameras; remote control apparatus for devices that permit human access control; remotely-controlled cameras; light systems comprising light sensors; set-top boxes; blank smart cards; chargers for smartphones; smart glasses; wireless charging pads for smartphones; tablet computers; smart phones;  internet-ready Televisions; USB cables for cellphones; safety sensors, namely, smoke detectors; solar batteries; sound recording apparatus and instruments; audio speakers; loud speaker systems; spectacles (optics); Spirit levels; Stand and Holder for Mobile accessories; Lighting ballasts; Electric igniters used in connection with ballasts to start discharge lamps; starters for fluorescent lights; tablet computers; telephone sets; telescopes; television monitors; television receivers; television transmitters; televisions; terminal for electronic books, namely, electronic book readers; terminal for electronic newspaper, namely, electronic book readers; terminal for electronic publications, namely, electronic book readers; terminal for electronic study books or papers, namely, electronic book readers; terminals for radiotelephones; Secure digital (SD) memory cards for mobile phone use; meat thermometers; thermometers, not for medical purposes; touch pads; transmitters of electronic signals; Turntable being record players; tv remote controls; Ultra-high definition televisions; Uninterrupted electrical power supplies apparatus; USB memory stick, namely, USB hardware; video cassette recorders; vehicle radios; vein identification device for time and attendance management; video cameras and camcorders; memory cards for video game machines; video recorders; video recording apparatus for vehicles; video telephones; video monitors, namely, multi monitor systems that create a single image over one wall; Virtual Reality Headsets; valve regulated lead acid batteries; walkie-talkies; cameras designed to attached to unmanned aerial devices; welding helmets; welding masks; wet cells batteries; electronic wireless access control systems for interlocking doors; computer hardware, namely, wireless access point devices; wireless speakers; x-ray apparatus not for medical purposes; zinc carbon battery; zinc chloride batteries

 

International Class 010: ear plugs for protection from noise; clinical thermometers; fever thermometers; ear thermometers;

 

International Class 012: motor vehicle alarm systems; anti-theft alarms for vehicles; unmanned aerial vehicle with camera accessories;

 

International Class 014: alarm clocks;

 

International Class 026: electric hair curlers, other than hand implements;

 

International Class 037: installation of computer networking hardware;

 

International Class 041: providing online computer games;

 

International Class 042: providing temporary use of on-line non-downloadable software and applications for controlling unmanned aircrafts; radar installations, namely, technical verification and validation of instrumentation radar systems;

 

SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

LINK TO ID MANUAL: 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 REQUIREMENT

 

The application identifies goods and/or services in more than one international class; therefore, applicant must 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 10 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

RESPONDING TO THIS OFFICE ACTION

 

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.    

 

 

/Flebbe, Kevin/

Trademark Examining Attorney

Law Office 110

United States Patent and Trademark Office

(571)-272-2423

kevin.flebbe@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 December 06, 2019 for

U.S. Trademark Application Serial No. 88588567

 

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. 

 

 

/Flebbe, Kevin/

Trademark Examining Attorney

Law Office 110

United States Patent and Trademark Office

(571)-272-2423

kevin.flebbe@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 December 06, 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.”