To: | ACPS Automotive GmbH (rockmail@reinhartlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88595136 - ORIS-FIX - 512014 |
Sent: | December 02, 2019 10:52:26 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88595136
Mark: ORIS-FIX
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Correspondence Address: REINHART BOERNER VAN DEUREN P.C.
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Applicant: ACPS Automotive GmbH
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Reference/Docket No. 512014
Correspondence Email Address: |
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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 02, 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-class 12 goods
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Applicant’s mark is “ORIS-FIX” in standard character form for (relevant class) “VEHICLE PARTS, IN PARTICULAR BODY AND FRAME PARTS, SUPPLEMENTAL SUSPENSIONS AND PARTS THEREFOR; VEHICLE ACCESSORIES AND VEHICLE ATTACHMENTS AND COMPONENTS THEREFOR; TRAILER HITCHES FOR VEHICLES; STABILISERS TO INHIBIT THE ROLL AND/OR PITCH OF VEHICLE TRAILERS; STABILISERS TO ENSURE BALANCE; CONTACT-BREAKING DEVICES FOR VEHICLE TRAILERS; TRANSPORT SYSTEMS FOR ROOFS, TAILS AND INTERIOR SPACE AND PARTS THEREFOR; PROTECTIVE EQUIPMENT, IN PARTICULAR FRONT PROTECTION, SIDE PROTECTION, EXTERNAL WHEEL SUPPORTS, WIND STOPS, WIND DEFLECTORS, ROLL BARS; CONTAINERS FOR TRANSPORTING AND STORING VEHICLE COMPONENTS, VEHICLE ATTACHMENTS AND VEHICLE ACCESSORIES” in International Class 12
Registrant's mark is "ORIS" in typed drawing form for "LAND VEHICLE PARTS, NAMELY, TRANSMISSIONS; CHASSIS REINFORCING PARTS FOR VEHICLES, namely, TRAILER HITCH MOUNTS AND CARGO CARRIER MOUNTS; BODY PANELS FOR VEHICLES; FRAME STRUCTURAL PARTS FOR VEHICLES; LAND VEHICLE PARTS AND ACCESSORIES, namely, TRAILER HITCHES, TRAILER STABILIZERS, LEVEL CONTROL STABILIZERS, TRAILER BREAK-AWAY RESTRAINTS, TOW BARS, WIND DEFLECTORS, ROOF BOX AND ROOF CONTAINER CARRIERS; FRONT, REAR AND SIDE VEHICLE BODY PROTECTION BARS; SPARE TIRE CARRIERS; WIND BLOCKERS AND ROLL BARS" in Class 12.
COMPARING MARKS
In this case, the applicant has added the term “FIX” to the registered mark “ORIS”. The mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d). Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).
COMPARING GOODS OR SERVICES
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
IDENTIFICATION OF GOODS
“Control devices IN THE NATURE OF ELECTRONIC CONTROLLERS for vehicle parts, vehicle components, vehicle attachments, vehicle accessories and trailer hitches for vehicles; Devices for detecting the operating and load conditions of vehicle parts, vehicle components, vehicle attachments, vehicle accessories and trailer hitches for vehicles IN THE NATURE OF __________ {identify product in Class 9 by physical characteristic detected, e.g., motion detectors, vibration detectors, instruments for detecting and measuring two-dimensional distribution of force and pressure, etc.}; Sensors for detecting the operating and load conditions of vehicle parts, vehicle components, vehicle attachments, vehicle accessories and trailer hitches for VEHICLES IN THE NATURE OF __________ {identify product in Class 9 by physical characteristic detected, e.g., pressure sensors, temperature sensors, motion sensors, etc.}; Electric equipment for vehicle accessories and vehicle attachment, NAMELY, __________ {identify products by common commercial or generic name, or if none, by purpose or function, e.g., charging stations for charging electric vehicles, electric accumulators, electronic key fobs being remote control apparatus, etc.};” in International Class 9
“Vehicle parts, in particular body and frame parts (specify), Suspension systems for __________ {identify vehicle, e.g., automobiles, bicycles, etc.} in the nature of supplemental suspensions and replacement parts therefor;; Vehicle accessories and vehicle attachments and components therefor (list); Trailer hitches for vehicles; Stabilisers to inhibit the roll and/or pitch of vehicle trailers; Stabilisers to ensure balance FOR VEHICLES; Contact-breaking devices for vehicle trailers IN THE NATURE OF BREAKAWAY BRAKE CONTROLLERS (this likely belongs in class9); Transport systems for roofs, tails and interior space and REPLACEMENT parts therefor, NAMELY, __________ {identify Class 12 products by common commercial or generic name, or if none, by purpose or function, e.g., automobile roof racks, car interior organizer bags specially adapted for fitting in vehicles, etc.};; Protective equipment, in particular front PROTECTION BEING __________ {identify particular Class 12 products by common commercial or generic name, or if none, by purpose or function, e.g., vehicle custom grills, vehicle bumpers, etc.}, side protection BEING __________ {identify particular Class 12 products by common commercial or generic name, or if none, by purpose or function, e.g., air bags vehicle bumpers, etc.}, external wheel supports BEING __________ {identify nature of particular Class 12 products by common commercial or generic name, or if none, by purpose or function, e.g., hubcaps, etc.}, wind stopsBEING __________ {identify particular Class 12 products by common commercial or generic name, or if none, by purpose or function, e.g., automobile windshields, aerodynamic fairings for vehicles, etc.}, wind deflectors BEING __________ {identify particular Class 12 products by common commercial or generic name, or if none, by purpose or function, e.g., automobile windshields, aerodynamic fairings for vehicles, etc.}; Containers specially adapted for transporting and storing vehicle components, vehicle attachments and vehicle accessories, namely, __________ {identify vehicle parts, attachments, and accessories for which containers are used};” in International Class 12
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.
INTENT TO PERFECT
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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.
/Linda Mickleburgh/
Linda Mickleburgh
Examining Attorney Law Office 106
571-272-9198
linda.mickleburgh@uspto.gov
RESPONSE GUIDANCE