To: | ABB Asea Brown Boveri Ltd (mail@iphorgan.net) |
Subject: | U.S. Trademark Application Serial No. 88617664 - ABB EASY PRO - ABb 12647 US |
Sent: | October 07, 2019 02:18:11 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88617664
Mark: ABB EASY PRO
|
|
Correspondence Address: |
|
Applicant: ABB Asea Brown Boveri Ltd
|
|
Reference/Docket No. ABb 12647 US
Correspondence Email Address: |
|
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 07, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
PARTIAL REFUSAL - SECTION 2(d): LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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.
Comparison 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).
Applicant has applied to register the mark ABB EASY PRO in standard characters.
Registrant has registered the mark EZ PRO in standard characters.
The terms “EASY PRO” and the registered mark “EZ PRO” are virtually identical in sound. The compared terms are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Further, the phonetic equivalent of the registered mark is entirely incorporated in the applied-for mark. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are phonetically equivalent in part and the additional house mark “ABB” does not further distinguish the marks.
Accordingly, Applicant’s mark and Registrant’s mark are phonetically equivalent in part and create the same overall commercial impression. Therefore, the marks are considered similar for likelihood of confusion purposes.
Comparison of Goods and/or Services
Applicant has applied for the mark ABB EASY PRO for use in connection with the following, in relevant part:
Class 009: cinematographic . . . apparatus, instruments and equipment
Registrant has registered the mark EZ PRO for use in connection with the following, in relevant part:
Class 009: turntables and accessories therefor, namely, microphones, speakers, headphones, all of the aforementioned being either stand alone or compatible with plug in and wireless smart device peripherals
In this case, the application uses the broad wording “cinematographic . . . apparatus, instruments and equipment,” which presumably encompasses all goods and/or services of the type described, including Registrant’s narrower “turntables and accessories therefor, namely, microphones, speakers, headphones, all of the aforementioned being either stand alone or compatible with plug in and wireless smart device peripherals” because cinematographic equipment could be in the form of sound recording apparatus such as headphones, speakers, and microphones. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, these goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Accordingly, these goods of Applicant and Registrant goods are legally identical such that they would be likely to give rise to the mistaken belief that the goods and/or services emanate from the same source.
Conclusion
Based on the foregoing, the parties possess highly similar marks in connection with closely related goods and/or services. Therefore, registration of the applied-for mark is partially refused pursuant to Section 2(d) of the Trademark Act because of a likelihood of confusion with the mark in U.S. Registration No. 4499382.
Applicant should note the following additional ground for refusal.
REFUSAL - FOREIGN REGISTRATION NOT FROM COUNTRY OF ORIGIN
To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01. Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national. 15 U.S.C. §1126(c); TMEP §1002.04.
Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04.
Thus, to overcome this refusal, applicant may provide the following written statement for the record: “Applicant has had a bona fide and effective industrial or commercial establishment in France as of the date of issuance of the foreign registration.” TMEP §1002.04. If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as a basis. See 15 U.S.C. §§1051(b),1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.
REQUIREMENT - TRANSLATION OF FOREIGN REGISTRATION
REQUIREMENT - IDENTIFICATION OF GOODS AND SERVICES
Applicant must clarify wording in the identification of goods and/or services because it is indefinite and/or overbroad.
This wording is indefinite because it does not make clear the exact nature, field, and/or purpose of the goods and/or services. For example, it is unclear what field the engineering services are in. Additionally, wording in Class 009 such as “counters” and “sensors” is also indefinite because it fails to describe what is being counted or detected, as opposed to an “automatic pill counter” or an “oil level sensor.” See 37 C.F.R. §2.32(a)(6); TMEP § 1402.01.
Further, much of the wording relating to instruments in Class 009 is overbroad because it includes goods and/or services in other classes. For example, “electric apparatus; sensors; including spare parts” could include “electric drills” in Class 007, “electrical plugs” in Class 009, and “sensors for medical use to gather animal biometric data” in Class 010. The wording “provision of computer programs on data networks, in particular on the Internet and the web” is also overbroad because it could include gaming programs as well, which are classified in Class 041. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant should note that any wording in bold or italics below offers guidance and/or shows the changes being proposed for the
identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it
will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should
enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 007: Dosing valves being parts of machines; electrical instruments in the nature of electrical drills
Class 009: Scientific apparatus and instruments, namely, {specify instruments in Class 009, e.g., ultra-high vacuum
chambers};, nautical apparatus and instruments, namely, {specify instruments in Class 009, e.g., underwater housings for cameras};, surveying apparatus and instruments;, electrical apparatus and instruments, namely, {specify instruments in
Class 009, e.g., electrical plugs};, photographic apparatus and instruments, namely, {specify instruments in Class 009, e.g., cameras};, cinematographic sound
recording apparatus and instruments;, optical instruments and apparatus, namely, {specify instruments in Class 009, e.g., optical receivers};
weighing apparatus and instruments;, measuring apparatus and instruments, namely, {specify instruments in Class 009,
e.g., instruments for measuring length};, analyzing apparatus and instruments, namely, {specify instruments in Class 009,
e.g., liquid analyzers};, displaying apparatus and instruments, namely, {specify instruments in Class 009, e.g., electronic display
interfaces},; signaling apparatus and instruments, namely, {specify instruments in Class 009, e.g., signaling whistles}; and checking (supervision) apparatus, instruments and
equipment for checking the temperature of gas and liquids , including spare parts for all products mentioned,; electrical and electronic apparatus,
instruments and apparatus in the nature of
{specify apparatus, e.g., electricity distribution consoles, power supplies} including spare parts for the
production, distribution and supply of electricity; Electrical connections parts; Voltage regulators;
Oil level sensors; fuses; Switchboards; voltmeters; Automatic pill counters; Circuit breakers; Measuring
instruments in the nature of tool measuring instruments; and automatic dosing valves; Downloadable mobile applications for configuring the
electrical distribution of residential installations
Class 010: Sensors for medical use to gather animal biometric data
Class 026: knitting counters
Class 041: Provision of computer programs in the nature of on-line nondownloadable game software on data networks, in particular on the Internet
Class 042: Provision of computer programs in the nature of on-line nondownloadable software for {specify function of
software, e.g., data base management} on data networks, in particular on the Internet and the web; Providing technical information relating
to the use of computers, computer hardware, computer software and on-line computer networks from a computer database or a computer network; Maintenance of computer software; Retrieval of computer
data from electronic databases for others; Software development; Software development; Engineering services in the field of {specify field, e.g., oil and gas}; Software development in the field of mobile applications; Development and management of software applications to configure products related to the electrical distribution of residential installations
See TMEP §§1402.01, 1402.03.
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.
REQUIREMENT - MULTIPLE-CLASS APPLICATION
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 2 classes. 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
REQUIREMENT – DISCLAIMER STATEMENT
In this case, applicant must disclaim the wording “PRO” because it is not inherently distinctive. The wording is at best merely descriptive of a feature of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster shows the wording “PRO” means “professional.” Further attached evidence from Microsoft and Tech Benders shows the term “PRO” being used to describe a professional version of software. Thus, the wording merely describes a feature of applicant’s goods and/or services because Applicant may have and develop a professional version of the software specified in the identification.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PRO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ADVISORY - OPTION TO DELETE SECTION 1(b) FILING BASIS
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action
Hansrajh, Keton
/Keton Hansrajh/
Trademark Examining Attorney
Law Office 128
(571) 272-3396
keton.hansrajh@uspto.gov
RESPONSE GUIDANCE