United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88624400
Mark: MARSAUTO
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Correspondence Address:
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Applicant: Shenzhen Sangshen E-commerce Co., Ltd.
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Reference/Docket No. 5-105-TUS
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 29, 2019
SUMMARY OF ISSUES:
REFUSAL – SECTION 2(d) – 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. 1341799; 1727160; 4071027; and 5348548. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The registered marks are:
· U.S. Registration No. 1341799 – “MARS” in stylized text for goods including:
o Class 009: Electric relays, transformers
· U.S. Registration No. 1727160 – “MARS” in standard characters for:
o Class 009: Warning lights and sirens
· U.S. Registration No. 4071027 – “MARS” in stylized text for goods including:
o Class 009: Electric relays, namely, switching relays; batteries, transformers
· U.S. Registration No. 5348548 – “IMARS” in stylized text for goods including:
o Class 009: Battery chargers; cell phone battery chargers; electric relays; emergency warning lights
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 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. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
The applied-for mark is “MARSAUTO” in stylized design with stylized text.
The registered marks are:
· U.S. Registration No. 1341799 – “MARS” in stylized text
· U.S. Registration No. 1727160 – “MARS” in standard characters
· U.S. Registration No. 4071027 – “MARS” in stylized text
· U.S. Registration No. 5348548 – “IMARS” in stylized text
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).
Adding a term, such as “AUTO,” to a registered mark, such as “MARS,” generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Furthermore, the applied-for mark “MARSAUTO” is confusingly similar to the registered mark “IMARS” because the marks share the similar term “MARS.” Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Addtionally, even though the applied-for mark “MARSAUTO” is in stylized design with stylized text, it is the literal word element of that mark that makes it confusingly similar to the registered marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Lastly, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant's goods sold under the “MARSAUTO” mark constitute a new or additional product line from the same source as the goods and services sold under the registered “MARS” marks with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
As such, the applied-for mark “MARSAUTO” is confusingly similar to the registered “MARS” and “IMARS” marks.
Similarity of the Goods
The applied-for goods for “MARSAUTO” are for:
The registered goods are:
· U.S. Registration No. 1341799 – “MARS” for goods including:
o Class 009: Electric relays, transformers
· U.S. Registration No. 1727160 – “MARS” for:
o Class 009: Warning lights and sirens
· U.S. Registration No. 4071027 – “MARS” for goods including:
o Class 009: Electric relays, namely, switching relays; batteries, transformers
· U.S. Registration No. 5348548 – “IMARS” for goods including:
o Class 009: Battery chargers; cell phone battery chargers; electric relays; emergency warning lights
In this case, the application uses broad wording to describe “power supplies” in Class 009, which presumably encompasses all goods of the type described, including registrants’ more narrow goods of “transformers; batteries; battery chargers; cell phone battery chargers” in Class 009. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrants’ goods are legally identical with respect to those goods. 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 of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrants’ goods are related.
The attached evidence from ELEGOO, Gikfun, and Nilight show entities that provide both LEDs and electrical switching relays all under the same mark. Additionally, the attached evidence from Blazer, Dinfu, and MIUHIU show entities that provide LEDs and warning lights all under the same mark. This evidence establishes that the same entity commonly manufactures, produces, and provides the relevant goods, markets the goods under the same mark, sells and provides the relevant goods through the same trade channels, and caters to the same classes of consumers. 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).
As such, the applied-for mark and registered marks share legally identical and related goods relating to power supplies and LEDs.
Conclusion
In conclusion, the applied-for mark “MARSAUTO” is confusingly similar to the registered “MARS” and “IMARS” marks because the marks share the similar term “MARS” and the marks share legally identical goods and related goods relating to power supplies and LEDs. Therefore, registration for the applied-for mark “MARSAUTO” is refused registration under Trademark Act Section 2(d).
Applicant should note the following additional ground for refusal.
REFUSAL – SPECIMEN – MOCK-UP SPECIMEN
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
An electronic display or webpage that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
In this case, the specimen consists of a webpage display of an electronic point of sale for the mark “MARSAUTO” in connection with “light emitting diodes.” Although the specimen shows the mark “MARSAUTO” used in association with a type of applicant’s goods, more information is needed to make a determination as to whether the applicant is actually selling or transporting the goods in commerce. The webpage appears to be a new listing as the date is “Sep 18, 2019,” which is two days before the filing date of September 20, 2019. This indicates that the applicant may have created the webpage for purposes of submission with this application. Therefore, the submitted specimen cannot be accepted. Please submit more information and documentation to verify use in commerce of the applied-for mark and see the information below.
Additional information/documentation required. To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimens. See 37 C.F.R. §2.61(b); TMEP §814. For each webpage submission, either as a specimen or as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Was the specimen created for submission with this application? If so, specify the date each specimen was created. If applicant obtained the content of the webpage or image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s).
(3) For each web-based specimen submission, provide the full name of the online retailer or wholesaler whose webpage is shown in the specimen, the website URL, and a digital copy of the complete webpage showing the goods for sale on the named website.
(4) For each online retailer or wholesaler identified in response to question (3), specify the date the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States through that retailer/wholesaler, and whether the goods are still for sale to or within the United States through that retailer/wholesaler. If applicant is the online retailer or wholesaler, provide at least three invoices or other supporting documentation that show payments or other consideration made and state the dollar amount of sales with or within the United States, redacting personal or private information of buyers as necessary.
(5) If the goods identified in response to question (1) are sold in another type of sales environment, identify the environment (e.g. retail stores, catalogs, trade shows) and provide photographs and/or documentation showing the goods for sale in that environment, such as photographs of the sales displays or goods on shelves with the mark. If the information about how the goods appear in the actual sales environment is not available to applicant, describe how applicant’s goods are sold or transported to or within the United States and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
Response options. Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now. See 37 C.F.R. §2.34. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
Alternatively, applicant may also respond to the refusal by submitting a different specimen (a “verified substitute specimen”) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation. Failure to comply with a requirement to furnish information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). However, amending the application filing basis to intent-to-use under Section 1(b) will moot the requirements for information and documentation.
REQUIREMENT – DESCRIPTION OF THE MARK – AMENDMENT REQUIRED
The following description is suggested, if accurate:
The mark consists of the wording “MARSAUTO” in stylized font. Above the wording is the outline of a stylized car consisting of three wavy lines.
RESPONSE GUIDELINES
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
Jalandoni, Chad
/Chad C. Jalandoni, Esq./
Trademark Examining Attorney
USPTO, Law Office 128
(571) 272-3329
chad.jalandoni@uspto.gov
RESPONSE GUIDANCE