To: | Cummins Inc. (ipdocketing@foley.com) |
Subject: | U.S. Trademark Application Serial No. 88628672 - CVC - N/A |
Sent: | December 27, 2019 12:35:16 PM |
Sent As: | ecom103@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. 88628672
Mark: CVC
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Correspondence Address: 321 NORTH CLARK STREET, SUITE 2800
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Applicant: Cummins Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
Issue date: December 27, 2019
The USPTO must receive applicant’s response to this letter within six months of the issue date above 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.
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.
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL – LIMITED
Registration of the applied-for mark is refused in regard to “Machines and tools, motors and engines and their parts and components; machine and engine couplings and transmission components,” in International Class 7 because of a likelihood of confusion with the marks in U.S. Registration Nos. 2328895, 2770610, and 4665426. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Specifically, applicant seeks registration of CVC (a standard character mark) for use with, in relevant part, “Machines and tools, motors and engines and their parts and components; machine and engine couplings and transmission components,” in International Class 7. Registrant CVC Technologies, Inc. holds a valid and subsisting United States trademark registration for CVC and Design (Reg. No. 2328895) for use with “auto liquid filling machines, auto capping machines, pressure sensitive labeling machines, cartoning machines, tablets/capsules counting machines, blister packing machines, alu-alu packing machines, tableting machines, capsule filling machines,” in International Class 7. SMS Siemag Aktiengesellschaft holds a valid and subsisting United States trademark registration for CVC (a typed mark) (Reg. No. 2770610) for use with, in relevant part, “Machines, namely, rolling mills and parts of the rolling mills, namely, rolls, roll chocks, roll bearings, roll displacement cylinders; couplings, namely, rolling mill couplings,” in International Class 7 Finally, registrant KSM Castings Group GmbH holds a valid and subsisting United States trademark registration for CVC (a standard character mark) (Reg. No. 4665426) for use with, in relevant part, “Casting machines, namely, die casting machines and vacuum die casting machines for castings light metals, namely, magnesium, aluminum and alloys thereof; machine bearing housings; engine bearing housings; cylinder head covers for engines; engine bearers; oil sumps as engine parts; bearing housings and chassis for electrics of machines and engines; die cast components, namely, vacuum die cast components being parts of machines; die casting moulds, namely, vacuum die casting moulds being parts of machines for use in the production of machine and vehicle parts; compressors, pumps and parts therefore, namely, injection pump housings for fuel injection, oil and water pump housings for machines, motors and engines; vacuum die cast components made of light metal combined with parts of steel, rubber and plastic for engine and machine parts and housings, except for land vehicles; housings for machines and engines, except for land vehicles; transmissions and parts therefore, except for land vehicles; hydraulic drives and parts thereof for machines and engines; pneumatic drives and parts thereof for machines and engines; exhaust manifolds for engines, except for land vehicles; transmission gearing and parts thereof for machines; cardan joints for machines; shifting clutches for power transmission and parts thereof, except for land vehicles; flywheels for machines; machine stands; machine parts, namely, stators; bearings, namely, pivot bearings for machines and engines; pistons, piston bolts and piston rings as well as ring segments and piston ring sets for internal combustion engines; cylinders, cylinder heads, and liners for cylinders for internal combustion engines, except for land vehicles; crank, transmission, clutch, injection pump and steering gear housing, carburettors for machine internal combustion engines, parts for braking systems, namely, braking cylinders; inlet manifolds and suction pipes for engines; accelerator throttle connectors, camshafts, and crankshafts for engines; connecting rods for machines, motors and engines; radiators for engines, exhaust gas coolers, intercoolers and oil coolers for vehicle engine parts; turbochargers and parts thereof for engines; all such above-mentioned goods not for use in rolling mills or as part of rolling mills,” in International Class 7. In light of the similarities between the marks and given the relatedness of their uses, consumer confusion is likely.
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).
CVC and Design (Reg. No. 2328895)
CVC (Reg. No. 2770610) & CVC (Reg. No. 4665426)
In the present case, applicant’s mark is CVC (a standard character mark) and registrants’ marks are CVC (Reg. No. 2770610) and CVC (Reg. No. 4665426). These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods. Id.
Therefore, the marks are confusingly similar.
COMPARISON OF GOODS
The goods and/or services 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).
In this case, the application uses broad wording to describe machines, which presumably encompasses all goods of the type described, including registrants’ more narrowly identified machines: “auto liquid filling machines” CVC and Design (Reg. No. 2328895), “machines, namely, rolling mills” CVC (Reg. No. 2770610), and “casting machines, namely, die casting machines” CVC (Reg. No. 4665426). 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 registrant’s 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 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.
SUMMARY – LIKELIHOOD OF CONFUSION
In light of the similarities between the marks and the relatedness of the goods, it is likely that consumers who encounter the parties’ goods will falsely conclude that they originate from the same source.
Based on the foregoing, registration of the applied-for mark is refused under Trademark Act Section 2(d).
Applicant should note the following prior-filed application that may present a bar to the registration of the applied-for mark.
PRIOR-FILED APPLICATION
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 mark in the referenced application. 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.
INDEFINITE IDENTIFICATION OF GOODS
The goods identified as “machines” in International Class 7 are indefinite. As identified these goods may include autogenous soldering machines in International Class 7, VCD machines in International Class 9, and exercise machines in International Class 28.
The goods identified as “tools” in International Class 7 are indefinite. If these goods are in the nature of machine tools, applicant may so specify and must indicate their purpose or function, such goods are properly classified in International Class 7.
In regard to the goods identified as “motors and engines” in International Class 7. Applicant must specify that exclude motors and engines for land vehicles.
However, while the word “parts” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a).
In regard to the goods identified as “machine and engine couplings” in International Class 7. Applicant must specify that exclude machine and engine couplings for land vehicles.
The goods identified as “machine and engine transmission components” are indefinite. Applicant must specify that these goods exclude such goods for land vehicles. In addition, if the “components” are in the nature of transmission replacement parts, applicant may so specify.
The goods identified as “electronic control module, and software contained therein, that performs electronic calibration, engineering, programming, and tuning of engines sold as an integrated component of engines” and “electronic control module, and software contained therein, that performs electronic calibration, engineering, programming, and tuning of engines sold as an integrated component of engines for land vehicles” are both properly classified in International Class 9.
The goods identified as “Engines for land vehicles and components thereof” in International Class 12 are indefinite. If these goods are in the nature of engines for land vehicles and replacement parts therefor, such goods are properly classified in International Class 12 and applicant may so specify.
Applicant may adopt the following identification, if accurate:
International Class 7 – Machines, namely, ______ {Applicant must further specify, i.e. agricultural seed planting machines, autogenous soldering machines, Die-cutting machines, etc.}; machine tools for ______ {Applicant must indicate purpose or function, e.g., compacting powder materials, crushing rock, etc.}; motors and engines, except for land vehicles, and replacement parts therefor; machine and engine couplings, except for land vehicles; machine and engine transmission replacement parts, except for land vehicles; cylinders for motors and engines
International Class 9 – Electronic control systems for engines comprised of ______ {Applicant must further specify, i.e. electronic control circuits for engines, electronic controllers for engines, etc.}; Electronic controllers, and software contained therein, for in-mission feature for engines and products equipped with compression brakes capable of regenerating and restoring catalyst health, restoring first catalyst health without the need for catalyst replacement, and improving engine power cylinder health; ______ {Applicant must specify format, i.e. Downloadable, Recorded, OR Downloadable and recorded} computer software for performing electronic calibration, engineering, programming, and tuning of engines, integrated as a component in electronic control modules; electronic control module, and software contained therein, that performs electronic calibration, engineering, programming, and tuning of engines sold as an integrated component of engines; electronic control module, and software contained therein, that performs electronic calibration, engineering, programming, and tuning of engines sold as an integrated component of engines for land vehicles
International Class 12 – Engines for land vehicles and replacement parts therefor
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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 REQUIREMENTS
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least six classes; however, applicant submitted fees sufficient for only three 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ADVISORY – RESPONSE ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action.
/Christopher M. Law/
Trademark Examining Attorney
Law Office 103
(571) 272-2913
christopher.law@uspto.gov
RESPONSE GUIDANCE