United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88641822
Mark: MAXBRIGHT
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Correspondence Address:
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Applicant: Maxbright Inc
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Reference/Docket No. N/A
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 13, 2020
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.
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
Applicant’s mark is MAXBRIGHT for LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED candles; LED flashlights; LED flood lights and LED work lights for construction settings; LED lamps; LED landscape lights; LED light apparatus that clips on to a handbag, used to illuminate a handbag; LED light assemblies for street lights, signs, commercial lighting, automobiles, buildings, and other architectural uses; LED light bulbs; LED light engines; LED light machines; LED light strips for decorative purposes; LED lighting assemblies for illuminated signs; LED lighting fixtures for indoor and outdoor lighting applications; LED lighting systems, namely, LED modules, power supplies, and wiring; LED lights for strings, flowers, branches and other ornamental decorations; LED luminaires; LED mood lights; LED nail drying apparatus; LED safety lamps; LED underwater lights; Flat panel lighting apparatus in the nature of LED electric light boxes for tracing designs and patterns on paper; Light Emitting Diode (LED) plant grow light; Optical lens covers that improve light output and uniformity and protect the LED, sold as a feature of an LED lighting system; Red LED flashlights for illumination purposes
Registrant’s mark is MAXBRITE for Lamp mantles; Chimneys for oil lamps; Lamp chimneys; Lamp shades for oil lamps; Oil and gas burners for domestic; oil lamps; oil lanterns
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.
Similarity of the Marks
The respective narks are similar. Both marks are compound marks that begin with the identical phrase “MAX” and end in the phonetically similar wording “BRIGHT” and “BRITE”. The marks 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).
The average purchaser’s recollection of the marks beginning with MAX and ending phonetically similar with BRIGHT ort BRITE will confuse people into believing that the goods come from a common source. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). Thus the marks are confusingly similar.
Similarity of the Goods
Applicant’s goods are LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED candles; LED flashlights; LED flood lights and LED work lights for construction settings; LED lamps; LED landscape lights; LED light apparatus that clips on to a handbag, used to illuminate a handbag; LED light assemblies for street lights, signs, commercial lighting, automobiles, buildings, and other architectural uses; LED light bulbs; LED light engines; LED light machines; LED light strips for decorative purposes; LED lighting assemblies for illuminated signs; LED lighting fixtures for indoor and outdoor lighting applications; LED lighting systems, namely, LED modules, power supplies, and wiring; LED lights for strings, flowers, branches and other ornamental decorations; LED luminaires; LED mood lights; LED nail drying apparatus; LED safety lamps; LED underwater lights; Flat panel lighting apparatus in the nature of LED electric light boxes for tracing designs and patterns on paper; Light Emitting Diode (LED) plant grow light; Optical lens covers that improve light output and uniformity and protect the LED, sold as a feature of an LED lighting system; Red LED flashlights for illumination purposes. Registrant’s goods are Lamp mantles; Chimneys for oil lamps; Lamp chimneys; Lamp shades for oil lamps; Oil and gas burners for domestic; oil lamps; oil lanterns.
In total the marks are highly similar and the goods are related. Therefore consumers are likely to be confused and mistakenly believe that the goods come from a common source. Accordingly, registration is refused under Section 2(d) of the Trademark Act.
U.S. APPLICANT WITH P.O. BOX-DOMICILE REQUIRED
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e. headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box instead of a street address. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
/Shavell McPherson-Rayburn/
Shavell McPherson-Rayburn
Examining Attorney
Law Office 106
571-272-6121
Shavell.mcpherson-rayburn@uspto.gov
RESPONSE GUIDANCE