To: | Arduino SA (nixonptomail@nixonvan.com) |
Subject: | U.S. Trademark Application Serial No. 88634696 - NANO - 6734-0036 |
Sent: | January 27, 2020 08:04:53 AM |
Sent As: | ecom121@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88634696
Mark: NANO
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Correspondence Address:
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Applicant: Arduino SA
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Reference/Docket No. 6734-0036
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: January 27, 2020
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. 3723784, 4339294, 5038632, 5125127, 5403932, 5543001, 5543171, 5572706, 5600434, 5699748, and 5886066. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is NANO in standard characters for “circuit boards and microcontrollers.”
The cited registrations are as follows:
NANOLOGIC in standard characters (Reg. No. 3723784) for the relevant goods “microcontrollers.”
VIA NANO in standard characters (Reg. No. 4339294) for the relevant goods “computer system components, parts and fittings, namely, . . . circuit boards.”
NANOALLOY with stylization (Reg. No. 5038632) for the relevant goods “plugboards in the nature of circuit boards; . . . ; flexible printed circuit boards.”
NANO DIMENSION in standard characters (Reg. No. 5125127) for the relevant goods “printed circuit boards; multi-layer printed circuit boards.”
NANO PULSE CONTROL in standard characters (Reg. No. 5403932) for the relevant goods “Other electronic machines, namely, . . . , electronic circuit board.”
NANO DIMENSION with stylization (Reg. No. 5543001) for the relevant goods “printed circuit boards; multi-layer printed circuit boards.”
ACRICH NANO in standard characters (Reg. No. 5543171) for the relevant goods “electronic circuit board for LED lighting apparatus.”
SEOUL NANODRIVER with stylization and design (Reg. No. 5572706) for the relevant goods “electronic circuit board for LED lighting apparatus.”
NANOMOTE in standard characters (Reg. No. 5600434) for the relevant goods “Microcontrollers.”
NANO DIMENSION 3D PRINTED ELECTRONICS with stylization and design (Reg. No. 5699748) for the relevant goods “printed circuit boards; multi-layer printed circuit boards.”
LEDGER NANO S in standard characters (Reg. No. 5886066) for the relevant goods “printed circuit boards.”
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 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).
In this case, applicant’s mark is NANO and each of registrants’ marks are NANOLOGIC, VIA NANO, NANOALLOY, NANO DIMENSION, NANO PULSE CONTROL, NANO DIMENSION, ACRICH NANO, SEOUL NANODRIVER, NANOMOTE, NANO DIMENSION 3D PRINTED ELECTRONICS, and LEDGER NANO S. Applicant’s mark is entirely incorporated within each of registrants’ marks. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. Additionally, although applicant’s mark does not contain the entirety of any of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of each of registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks. In other words, the wording NANO is common to many but exclusive to none.
Therefore, applicant’s mark and registrants’ marks share the same commercial impression and are confusingly similar.
Comparison of Goods
In this case, the goods in the application and some of the registrations are identical. Specifically, both applicant and registrants for U.S. Registration Nos. 3723784 and 5600434 include “microcontrollers.” Additionally, the application uses broad wording to describe “circuit boards,” which presumably encompasses all goods of the type described, including registrants’ for U.S. Registration Nos. 4339294, 5038632, 5125127, 5403932, 5543001, 5543171, 5572706, 5699748, and 5886066 more narrow “computer system components, parts and fittings, namely, . . . circuit boards,” “plugboards in the nature of circuit boards; . . . ; flexible printed circuit boards,” “printed circuit boards; multi-layer printed circuit boards,” “Other electronic machines, namely, . . . , electronic circuit board,” “printed circuit boards; multi-layer printed circuit boards,” “electronic circuit board for LED lighting apparatus,” “electronic circuit board for LED lighting apparatus,” “printed circuit boards; multi-layer printed circuit boards,” and “printed circuit boards.” 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). Therefore, it is presumed that the channels of trade and classes 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 registrants’ goods are related.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act for applicant’s goods.
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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.
/Steven W. Ferrell Jr./
Examining Attorney
Law Office 121
(571) 270-3424
steven.ferrell@uspto.gov
RESPONSE GUIDANCE