Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

Issue date:  August 03, 2020

This Office action is in response to the applicant’s communication dated July 16, 2020. In a previous Office action issued January 21, 2020, the examining attorney refused registration of the applied-for mark for the following issue: a refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration No. 1489176.

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 1489176.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). All previous evidence and arguments, where applicable, are incorporated by reference herein.

Registration Refused – Section 2(d) Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1489176.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  A copy of the cited registration is attached to the January 21, 2020 Office action.

The applied-for mark is “PROLINK” in standard characters for “Electronic components and systems for flight management systems of aircrafts, namely, avionics in the nature of aircraft navigation systems” in International Class 9.

The registered mark is “PRO-LINK” in typed characters for “Portable vehicular diagnostic equipment, namely portable display, communication and processing stations, computer programs and plug-in cartridges therefor and instructional manuals sold as a unit” in International Class 9.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.

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); 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

In this instance, the compared marks are identical except for a slight difference in appearance between applicant’s mark, which appears as a compound word with no space separating the words, that is, “PROLINK”; and the registrant’s mark, which appears as multiple words with a hyphen separating the words, that is, “PRO-LINK”.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”). 

Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.

Nature and Number of Similar Marks

In the applicant’s July 16, 2020 communication, it argues that there are several registrations that contain the wording “PROLINK”. However, the mere submission of a list of registrations does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018); TBMP §1208.02; TMEP §710.03. To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered.

Nonetheless, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Furthermore, the weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991).  Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)). Evidence that the terms in the mark are used for unrelated goods, as would be the case here, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017).

Comparison of Goods

The compared goods 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); TMEP §1207.01(a)(i).  Instead, the respective goods 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] emanate from the same source.”  7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007); TMEP §1207.01(a)(i).

Here, the goods at issue are related because the goods commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from manufacturers of avionics equipment (“Exhibit A”). This evidence establishes that the same entity, such as Honeywell® and Teledyne®, commonly manufactures aircraft navigation and flight systems as well as portable devices and software for airplane diagnostics under the same mark, which are promoted through the same trade channels and to the same classes of consumers for similar or complementary purposes, namely, to operate aircraft and ensure the proper functioning thereof. For example, Honeywell® produces a portable diagnostic system for aircraft applications as well as avionic for flight and navigation control, which are marketed on its website to commercial or military users of aircraft to provide the means to safely and effectively operate an aircraft.

In the applicant’s July 16, 2020 communication, it argues that the goods at issue are distinct as, in actual use, the registrant’s goods are diagnostics equipment for semi-tractor trailers and the applied-for goods are for aircraft navigation systems. However, the determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).  Here, the registrant broadly identifies its goods as vehicular diagnostic equipment, which would include aircraft as aircraft are powered flying vehicles (“Exhibit B”). Moreover, even if the purpose of each equipment is distinct, the evidence of record demonstrates that the goods commonly emanate from the same commercial entity and are used together to ensure the proper operation and functioning of an aircraft.

Thus, the goods of the applicant and registrant are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).

Conclusion

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002).

Because the applicant’s applied-for mark and the registered mark are similar and the goods are related, registration is refused for a likelihood of confusion under Section 2(d).

Based on the foregoing, the refusal to register the applied-for mark under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration No. 1489176 is continued and made FINAL.

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on August 03, 2020 for

U.S. Trademark Application Serial No. 88651325

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

(1)  Read the official letter.

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 03, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”