United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88676101
Mark: ID
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Correspondence Address: 600 SUPERIOR AVENUE, EAST, SUITE 2100
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Applicant: HORIZON GLOBAL AMERICAS INC.
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Reference/Docket No. 40838-00053
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 23, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Prior-filed Applications—Advisory
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. 5129459, 5129460, 5129458, 5658672, 5888909, 5917404, 5917405, 5917406, 5917407, and 5917409. 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 “ID”, for use with:
Class 9: trailer brake controllers
The registered marks are as follows in the chart below:
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U.S. REGISTRATION NO. |
MARK |
RELEVANT GOODS AND/OR SERVICES |
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1. |
5658672 |
ID, and design the |
Class 35: Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories |
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2. |
5129458 |
ID |
Class 9: batteries and battery chargers; electrical components for remote controlled model vehicles, namely, electrical adapters, electrical connectors Class 28: Remote controlled model vehicles and parts and accessories therefor |
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3. |
5129459 |
ID |
Class 9: batteries and battery chargers Class 28: remote controlled model vehicles and parts and accessories therefor |
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4. |
5129460 |
ID |
Class 9: batteries and battery chargers Class 28 Remote controlled model vehicles and parts and accessories therefor |
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5. |
5917409 |
ID.9 |
Class 9: Recorded content, namely, video recordings featuring automobiles; information technology equipment, namely, telephones; audiovisual equipment, namely, receivers; magnets; magnetizers and demagnetizers for magnetic tapes; apparatus for electricity, namely, transistors; instruments for electricity, namely, electric voltage transformers; cables for electricity; optical devices, enhancers and correctors, namely, optical condensers, binoculars, optical corrector lenses; safety, security, protection and signaling devices, namely, vehicle safety devices, namely, back-up sensors and cameras, LCD monitors for security purposes, eye covers for protective purposes, emergency warning lights; diving equipment, namely, scuba diving masks, weight belts for scuba diving, scuba snorkels, scuba goggles, regulators for use in scuba diving; navigation, guidance, tracking, targeting and map making devices, namely, navigation apparatus for vehicles, GPS navigation device; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for detecting, monitoring and measuring two-dimensional distribution of force and pressure; measuring apparatus, namely, sizers for automobile parts; scientific research and laboratory apparatus, namely, centrifuges, homogenizers; laboratory equipment, namely, cupels; educational simulators, namely, simulators for driving or control of vehicles; scientific, nautical, surveying, photographic, cinematographic, electric weighing, measuring, signaling, checking and supervising, lifesaving apparatus and instruments, namely, spectrometers and parts and fittings therefor, navigation apparatus for boats, photographic flashbulbs, cinematographic projectors, weighing scales, rain gauges, electrical annunciators, apparatus for checking flight parameters, life-saving rafts; contact lenses; spectacles; spectacle cases; magnifying glasses; sunglasses; vehicle breakdown warning triangles; vehicle breakdown warning lamps other than parts of vehicles; electric batteries and replacement parts therefor; electric accumulators and replacement parts therefor; fuel cells and replacement parts therefor; solar batteries; electric batteries for vehicles; electric accumulators for vehicles; chargers for electric batteries; burglar alarms; fire alarms; smoke alarms; gas alarms; theft alarms; fire extinguishing apparatus; scales; spirit levels; compasses, namely, directional compasses; fuel gauges; measuring instruments in the nature of rulers; acid hydrometers; electronic controllers and power and voltage stabilizing supply units for vehicle headlights; light emitting diodes (LEDs); electronic power controllers; electrical and electronic controllers and instruments for controlling automobiles; simulators for the steering and control of vehicles; voltage regulators for vehicles; speed indicators; revolution counters, namely, tachometers; measuring apparatus and instruments, namely, distance measuring apparatus; life-saving apparatus and equipment, namely, life-saving rafts, fire escape ladders, safety nets, safety tarpaulins, life belts, life buoys and life jackets; electrical fuses; fuses for automobiles; electric relays; lasers not for medical purposes; laser pointers; electronic key fobs being remote control apparatus; aerials; navigation apparatus for vehicles, namely, onboard computers; mobile telephones; telephone apparatus; television apparatus, namely, television apparatus for projection purposes; video telephones; radios; satellite navigation systems, namely, global positioning systems (GPS) and satellite-aided navigation systems; electric navigational instruments; telematic apparatus, namely, GPS tracking devices for vehicles; telematics terminal apparatus, namely, wireless Internet devices for tracking vehicles; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, semiconductor wafers, electric circuit switches, electrical transformers, electric accumulators, voltage regulators for electric power, electrical controllers; apparatus for recording, transmission and/or reproduction of sound and images; magnetic, electronic and optical data carriers, namely, hard disk drives, blank USB flash drives, blank optical data carriers and optical disks featuring music; phonograph records featuring music; blank audio video compact discs; audio-video compact discs featuring music; blank recordable DVDs; DVDs featuring vehicle safety information; digital recording apparatus, namely, digital voice recorders; sound carriers, namely, audio speakers; coin operated jukeboxes; compact discs, namely, CD-ROMs featuring music; blank recordable compact discs; downloadable music files; audio headphones; loudspeakers and cabinets for loudspeakers; illuminated signs, namely, illuminated exit signs; compact disc players; DVD players; phototelegraphy apparatus; slide and photograph projection apparatus; exposed camera films; cinematographic cameras; photocopiers; computer-based electronic translation apparatus, namely, electronic pocket translators; encoded magnetic cards for use as electronic tickets; integrated circuit cards, namely, encoded smart cards containing programming used for controlling and operating vehicles; encoded telephone cards, namely, pre-paid telephone calling cards, magnetically encoded; mechanisms for coin-operated apparatus; automatic banking machines, namely, automated teller machines; cash registers; calculators; data processing apparatus; computers; electronic agendas, namely, calendars and organizers; facsimile apparatus; computer monitors; computer peripheral devices; recorded and downloadable computer software for use in database management and for use in the autonomous navigation of vehicles; computer application software for operating vehicles, namely, software for use in database management and for use in the autonomous navigation of vehicles; all the above goods are not related to video games; pocket calculators; downloadable electronic publications in the nature of magazines in the field of automobiles; downloadable image files containing images of automobiles; crash test dummies; microscopes; electric sockets, plugs and contacts; electric igniting apparatus for igniting at a distance, namely, keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and key fob with electronic signal transponder; radioactivity measuring apparatus for industrial purposes; protective helmets; electric locks; electronic controllers and electronic control systems for controlling automobiles, engines and machines; none of the aforesaid goods in connection with rail vehicles |
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6. |
5917407 |
ID.6 |
Class 9: Recorded content, namely, video recordings featuring automobiles; information technology equipment, namely, telephones; audiovisual equipment, namely, receivers; magnets; magnetizers and demagnetizers for magnetic tapes; apparatus for electricity, namely, transistors; instruments for electricity, namely, electric voltage transformers; cables for electricity; optical devices, enhancers and correctors, namely, optical condensers, binoculars, optical corrector lenses; safety, security, protection and signaling devices, namely, vehicle safety devices, namely, back-up sensors and cameras, LCD monitors for security purposes, eye covers for protective purposes, emergency warning lights; diving equipment, namely, scuba diving masks, weight belts for scuba diving, scuba snorkels, scuba goggles, regulators for use in scuba diving; navigation, guidance, tracking, targeting and map making devices, namely, navigation apparatus for vehicles, GPS navigation device; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for detecting, monitoring and measuring two-dimensional distribution of force and pressure; measuring apparatus, namely, sizers for automobile parts; scientific research and laboratory apparatus, namely, centrifuges, homogenizers; laboratory equipment, namely, cupels; educational simulators, namely, simulators for driving or control of vehicles; scientific, nautical, surveying, photographic, cinematographic, electric weighing, measuring, signaling, checking and supervising, lifesaving apparatus and instruments, namely, spectrometers and parts and fittings therefor, navigation apparatus for boats, photographic flashbulbs, cinematographic projectors, weighing scales, rain gauges, electrical annunciators, apparatus for checking flight parameters, life-saving rafts; contact lenses; spectacles; spectacle cases; magnifying glasses; sunglasses; vehicle breakdown warning triangles; vehicle breakdown warning lamps other than parts of vehicles; electric batteries and replacement parts therefor; electric accumulators and replacement parts therefor; fuel cells and replacement parts therefor; solar batteries; electric batteries for vehicles; electric accumulators for vehicles; chargers for electric batteries; burglar alarms; fire alarms; smoke alarms; gas alarms; theft alarms; fire extinguishing apparatus; scales; spirit levels; compasses, namely, directional compasses; fuel gauges; measuring instruments in the nature of rulers; acid hydrometers; electronic controllers and power and voltage stabilizing supply units for vehicle headlights; light emitting diodes (LEDs); electronic power controllers; electrical and electronic controllers and instruments for controlling automobiles; simulators for the steering and control of vehicles; voltage regulators for vehicles; speed indicators; revolution counters, namely, tachometers; measuring apparatus and instruments, namely, distance measuring apparatus; life-saving apparatus and equipment, namely, life-saving rafts, fire escape ladders, safety nets, safety tarpaulins, life belts, life buoys and life jackets; electrical fuses; fuses for automobiles; electric relays; lasers not for medical purposes; laser pointers; electronic key fobs being remote control apparatus; aerials; navigation apparatus for vehicles, namely, onboard computers; mobile telephones; telephone apparatus; television apparatus, namely, television apparatus for projection purposes; video telephones; radios; satellite navigation systems, namely, global positioning systems (GPS) and satellite-aided navigation systems; electric navigational instruments; telematic apparatus, namely, GPS tracking devices for vehicles; telematics terminal apparatus, namely, wireless Internet devices for tracking vehicles; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, semiconductor wafers, electric circuit switches, electrical transformers, electric accumulators, voltage regulators for electric power, electrical controllers; apparatus for recording, transmission and/or reproduction of sound and images; magnetic, electronic and optical data carriers, namely, hard disk drives, blank USB flash drives, blank optical data carriers and optical disks featuring music; phonograph records featuring music; blank audio video compact discs; audio-video compact discs featuring music; blank recordable DVDs; DVDs featuring vehicle safety information; digital recording apparatus, namely, digital voice recorders; sound carriers, namely, audio speakers; coin operated jukeboxes; compact discs, namely, CD-ROMs featuring music; blank recordable compact discs; downloadable music files; audio headphones; loudspeakers and cabinets for loudspeakers; illuminated signs, namely, illuminated exit signs; compact disc players; DVD players; phototelegraphy apparatus; slide and photograph projection apparatus; exposed camera films; cinematographic cameras; photocopiers; computer-based electronic translation apparatus, namely, electronic pocket translators; encoded magnetic cards for use as electronic tickets; integrated circuit cards, namely, encoded smart cards containing programming used for controlling and operating vehicles; encoded telephone cards, namely, pre-paid telephone calling cards, magnetically encoded; mechanisms for coin-operated apparatus; automatic banking machines, namely, automated teller machines; cash registers; calculators; data processing apparatus; computers; electronic agendas, namely, calendars and organizers; facsimile apparatus; computer monitors; computer peripheral devices; recorded and downloadable computer software for use in database management and for use in the autonomous navigation of vehicles; computer application software for operating vehicles, namely, software for use in database management and for use in the autonomous navigation of vehicles; all the above goods are not related to video games; pocket calculators; downloadable electronic publications in the nature of magazines in the field of automobiles; downloadable image files containing images of automobiles; crash test dummies; microscopes; electric sockets, plugs and contacts; electric igniting apparatus for igniting at a distance, namely, keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and key fob with electronic signal transponder; radioactivity measuring apparatus for industrial purposes; protective helmets; electric locks; electronic controllers and electronic control systems for controlling automobiles, engines and machines; none of the aforesaid goods in connection with rail vehicles |
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7. |
5917406 |
ID.5 |
Class 9: Recorded content, namely, video recordings featuring automobiles; information technology equipment, namely, telephones; audiovisual equipment, namely, receivers; magnets; magnetizers and demagnetizers for magnetic tapes; apparatus for electricity, namely, transistors; instruments for electricity, namely, electric voltage transformers; cables for electricity; optical devices, enhancers and correctors, namely, optical condensers, binoculars, optical corrector lenses; safety, security, protection and signaling devices, namely, vehicle safety devices, namely, back-up sensors and cameras, LCD monitors for security purposes, eye covers for protective purposes, emergency warning lights; diving equipment, namely, scuba diving masks, weight belts for scuba diving, scuba snorkels, scuba goggles, regulators for use in scuba diving; navigation, guidance, tracking, targeting and map making devices, namely, navigation apparatus for vehicles, GPS navigation device; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for detecting, monitoring and measuring two-dimensional distribution of force and pressure; measuring apparatus, namely, sizers for automobile parts; scientific research and laboratory apparatus, namely, centrifuges, homogenizers; laboratory equipment, namely, cupels; educational simulators, namely, simulators for driving or control of vehicles; scientific, nautical, surveying, photographic, cinematographic, electric weighing, measuring, signaling, checking and supervising, lifesaving apparatus and instruments, namely, spectrometers and parts and fittings therefor, navigation apparatus for boats, photographic flashbulbs, cinematographic projectors, weighing scales, rain gauges, electrical annunciators, apparatus for checking flight parameters, life-saving rafts; contact lenses; spectacles; spectacle cases; magnifying glasses; sunglasses; vehicle breakdown warning triangles; vehicle breakdown warning lamps other than parts of vehicles; electric batteries and replacement parts therefor; electric accumulators and replacement parts therefor; fuel cells and replacement parts therefor; solar batteries; electric batteries for vehicles; electric accumulators for vehicles; chargers for electric batteries; burglar alarms; fire alarms; smoke alarms; gas alarms; theft alarms; fire extinguishing apparatus; scales; spirit levels; compasses, namely, directional compasses; fuel gauges; measuring instruments in the nature of rulers; acid hydrometers; electronic controllers and power and voltage stabilizing supply units for vehicle headlights; light emitting diodes (LEDs); electronic power controllers; electrical and electronic controllers and instruments for controlling automobiles; simulators for the steering and control of vehicles; voltage regulators for vehicles; speed indicators; revolution counters, namely, tachometers; measuring apparatus and instruments, namely, distance measuring apparatus; life-saving apparatus and equipment, namely, life-saving rafts, fire escape ladders, safety nets, safety tarpaulins, life belts, life buoys and life jackets; electrical fuses; fuses for automobiles; electric relays; lasers not for medical purposes; laser pointers; electronic key fobs being remote control apparatus; aerials; navigation apparatus for vehicles, namely, onboard computers; mobile telephones; telephone apparatus; television apparatus, namely, television apparatus for projection purposes; video telephones; radios; satellite navigation systems, namely, global positioning systems (GPS) and satellite-aided navigation systems; electric navigational instruments; telematic apparatus, namely, GPS tracking devices for vehicles; telematics terminal apparatus, namely, wireless Internet devices for tracking vehicles; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, semiconductor wafers, electric circuit switches, electrical transformers, electric accumulators, voltage regulators for electric power, electrical controllers; apparatus for recording, transmission and/or reproduction of sound and images; magnetic, electronic and optical data carriers, namely, hard disk drives, blank USB flash drives, blank optical data carriers and optical disks featuring music; phonograph records featuring music; blank audio video compact discs; audio-video compact discs featuring music; blank recordable DVDs; DVDs featuring vehicle safety information; digital recording apparatus, namely, digital voice recorders; sound carriers, namely, audio speakers; coin operated jukeboxes; compact discs, namely, CD-ROMs featuring music; blank recordable compact discs; downloadable music files; audio headphones; loudspeakers and cabinets for loudspeakers; illuminated signs, namely, illuminated exit signs; compact disc players; DVD players; phototelegraphy apparatus; slide and photograph projection apparatus; exposed camera films; cinematographic cameras; photocopiers; computer-based electronic translation apparatus, namely, electronic pocket translators; encoded magnetic cards for use as electronic tickets; integrated circuit cards, namely, encoded smart cards containing programming used for controlling and operating vehicles; encoded telephone cards, namely, pre-paid telephone calling cards, magnetically encoded; mechanisms for coin-operated apparatus; automatic banking machines, namely, automated teller machines; cash registers; calculators; data processing apparatus; computers; electronic agendas, namely, calendars and organizers; facsimile apparatus; computer monitors; computer peripheral devices; recorded and downloadable computer software for use in database management and for use in the autonomous navigation of vehicles; computer application software for operating vehicles, namely, software for use in database management and for use in the autonomous navigation of vehicles; all the above goods are not related to video games; pocket calculators; downloadable electronic publications in the nature of magazines in the field of automobiles; downloadable image files containing images of automobiles; crash test dummies; microscopes; electric sockets, plugs and contacts; electric igniting apparatus for igniting at a distance, namely, keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and key fob with electronic signal transponder; radioactivity measuring apparatus for industrial purposes; protective helmets; electric locks; electronic controllers and electronic control systems for controlling automobiles, engines and machines; none of the aforesaid goods in connection with rail vehicles |
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8. |
5917405 |
ID.2 |
Class 9: Recorded content, namely, video recordings featuring automobiles; information technology equipment, namely, telephones; audiovisual equipment, namely, receivers; magnets; magnetizers and demagnetizers for magnetic tapes; apparatus for electricity, namely, transistors; instruments for electricity, namely, electric voltage transformers; cables for electricity; optical devices, enhancers and correctors, namely, optical condensers, binoculars, optical corrector lenses; safety, security, protection and signaling devices, namely, vehicle safety devices, namely, back-up sensors and cameras, LCD monitors for security purposes, eye covers for protective purposes, emergency warning lights; diving equipment, namely, scuba diving masks, weight belts for scuba diving, scuba snorkels, scuba goggles, regulators for use in scuba diving; navigation, guidance, tracking, targeting and map making devices, namely, navigation apparatus for vehicles, GPS navigation device; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for detecting, monitoring and measuring two-dimensional distribution of force and pressure; measuring apparatus, namely, sizers for automobile parts; scientific research and laboratory apparatus, namely, centrifuges, homogenizers; laboratory equipment, namely, cupels; educational simulators, namely, simulators for driving or control of vehicles; scientific, nautical, surveying, photographic, cinematographic, electric weighing, measuring, signaling, checking and supervising, lifesaving apparatus and instruments, namely, spectrometers and parts and fittings therefor, navigation apparatus for boats, photographic flashbulbs, cinematographic projectors, weighing scales, rain gauges, electrical annunciators, apparatus for checking flight parameters, life-saving rafts; contact lenses; spectacles; spectacle cases; magnifying glasses; sunglasses; vehicle breakdown warning triangles; vehicle breakdown warning lamps other than parts of vehicles; electric batteries and replacement parts therefor; electric accumulators and replacement parts therefor; fuel cells and replacement parts therefor; solar batteries; electric batteries for vehicles; electric accumulators for vehicles; chargers for electric batteries; burglar alarms; fire alarms; smoke alarms; gas alarms; theft alarms; fire extinguishing apparatus; scales; spirit levels; compasses, namely, directional compasses; fuel gauges; measuring instruments in the nature of rulers; acid hydrometers; electronic controllers and power and voltage stabilizing supply units for vehicle headlights; light emitting diodes (LEDs); electronic power controllers; electrical and electronic controllers and instruments for controlling automobiles; simulators for the steering and control of vehicles; voltage regulators for vehicles; speed indicators; revolution counters, namely, tachometers; measuring apparatus and instruments, namely, distance measuring apparatus; life-saving apparatus and equipment, namely, life-saving rafts, fire escape ladders, safety nets, safety tarpaulins, life belts, life buoys and life jackets; electrical fuses; fuses for automobiles; electric relays; lasers not for medical purposes; laser pointers; electronic key fobs being remote control apparatus; aerials; navigation apparatus for vehicles, namely, onboard computers; mobile telephones; telephone apparatus; television apparatus, namely, television apparatus for projection purposes; video telephones; radios; satellite navigation systems, namely, global positioning systems (GPS) and satellite-aided navigation systems; electric navigational instruments; telematic apparatus, namely, GPS tracking devices for vehicles; telematics terminal apparatus, namely, wireless Internet devices for tracking vehicles; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, semiconductor wafers, electric circuit switches, electrical transformers, electric accumulators, voltage regulators for electric power, electrical controllers; apparatus for recording, transmission and/or reproduction of sound and images; magnetic, electronic and optical data carriers, namely, hard disk drives, blank USB flash drives, blank optical data carriers and optical disks featuring music; phonograph records featuring music; blank audio video compact discs; audio-video compact discs featuring music; blank recordable DVDs; DVDs featuring vehicle safety information; digital recording apparatus, namely, digital voice recorders; sound carriers, namely, audio speakers; coin operated jukeboxes; compact discs, namely, CD-ROMs featuring music; blank recordable compact discs; downloadable music files; audio headphones; loudspeakers and cabinets for loudspeakers; illuminated signs, namely, illuminated exit signs; compact disc players; DVD players; phototelegraphy apparatus; slide and photograph projection apparatus; exposed camera films; cinematographic cameras; photocopiers; computer-based electronic translation apparatus, namely, electronic pocket translators; encoded magnetic cards for use as electronic tickets; integrated circuit cards, namely, encoded smart cards containing programming used for controlling and operating vehicles; encoded telephone cards, namely, pre-paid telephone calling cards, magnetically encoded; mechanisms for coin-operated apparatus; automatic banking machines, namely, automated teller machines; cash registers; calculators; data processing apparatus; computers; electronic agendas, namely, calendars and organizers; facsimile apparatus; computer monitors; computer peripheral devices; recorded and downloadable computer software for use in database management and for use in the autonomous navigation of vehicles; computer application software for operating vehicles, namely, software for use in database management and for use in the autonomous navigation of vehicles; all the above goods are not related to video games; pocket calculators; downloadable electronic publications in the nature of magazines in the field of automobiles; downloadable image files containing images of automobiles; crash test dummies; microscopes; electric sockets, plugs and contacts; electric igniting apparatus for igniting at a distance, namely, keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and key fob with electronic signal transponder; radioactivity measuring apparatus for industrial purposes; protective helmets; electric locks; electronic controllers and electronic control systems for controlling automobiles, engines and machines; none of the aforesaid goods in connection with rail vehicles |
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9. |
5917404 |
ID.1 |
Class 9: Recorded content, namely, video recordings featuring automobiles; information technology equipment, namely, telephones; audiovisual equipment, namely, receivers; magnets; magnetizers and demagnetizers for magnetic tapes; apparatus for electricity, namely, transistors; instruments for electricity, namely, electric voltage transformers; cables for electricity; optical devices, enhancers and correctors, namely, optical condensers, binoculars, optical corrector lenses; safety, security, protection and signaling devices, namely, vehicle safety devices, namely, back-up sensors and cameras, LCD monitors for security purposes, eye covers for protective purposes, emergency warning lights; diving equipment, namely, scuba diving masks, weight belts for scuba diving, scuba snorkels, scuba goggles, regulators for use in scuba diving; navigation, guidance, tracking, targeting and map making devices, namely, navigation apparatus for vehicles, GPS navigation device; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for detecting, monitoring and measuring two-dimensional distribution of force and pressure; measuring apparatus, namely, sizers for automobile parts; scientific research and laboratory apparatus, namely, centrifuges, homogenizers; laboratory equipment, namely, cupels; educational simulators, namely, simulators for driving or control of vehicles; scientific, nautical, surveying, photographic, cinematographic, electric weighing, measuring, signaling, checking and supervising, lifesaving apparatus and instruments, namely, spectrometers and parts and fittings therefor, navigation apparatus for boats, photographic flashbulbs, cinematographic projectors, weighing scales, rain gauges, electrical annunciators, apparatus for checking flight parameters, life-saving rafts; contact lenses; spectacles; spectacle cases; magnifying glasses; sunglasses; vehicle breakdown warning triangles; vehicle breakdown warning lamps other than parts of vehicles; electric batteries and replacement parts therefor; electric accumulators and replacement parts therefor; fuel cells and replacement parts therefor; solar batteries; electric batteries for vehicles; electric accumulators for vehicles; chargers for electric batteries; burglar alarms; fire alarms; smoke alarms; gas alarms; theft alarms; fire extinguishing apparatus; scales; spirit levels; compasses, namely, directional compasses; fuel gauges; measuring instruments in the nature of rulers; acid hydrometers; electronic controllers and power and voltage stabilizing supply units for vehicle headlights; light emitting diodes (LEDs); electronic power controllers; electrical and electronic controllers and instruments for controlling automobiles; simulators for the steering and control of vehicles; voltage regulators for vehicles; speed indicators; revolution counters, namely, tachometers; measuring apparatus and instruments, namely, distance measuring apparatus; life-saving apparatus and equipment, namely, life-saving rafts, fire escape ladders, safety nets, safety tarpaulins, life belts, life buoys and life jackets; electrical fuses; fuses for automobiles; electric relays; lasers not for medical purposes; laser pointers; electronic key fobs being remote control apparatus; aerials; navigation apparatus for vehicles, namely, onboard computers; mobile telephones; telephone apparatus; television apparatus, namely, television apparatus for projection purposes; video telephones; radios; satellite navigation systems, namely, global positioning systems (GPS) and satellite-aided navigation systems; electric navigational instruments; telematic apparatus, namely, GPS tracking devices for vehicles; telematics terminal apparatus, namely, wireless Internet devices for tracking vehicles; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, semiconductor wafers, electric circuit switches, electrical transformers, electric accumulators, voltage regulators for electric power, electrical controllers; apparatus for recording, transmission and/or reproduction of sound and images; magnetic, electronic and optical data carriers, namely, hard disk drives, blank USB flash drives, blank optical data carriers and optical disks featuring music; phonograph records featuring music; blank audio video compact discs; audio-video compact discs featuring music; blank recordable DVDs; DVDs featuring vehicle safety information; digital recording apparatus, namely, digital voice recorders; sound carriers, namely, audio speakers; coin operated jukeboxes; compact discs, namely, CD-ROMs featuring music; blank recordable compact discs; downloadable music files; audio headphones; loudspeakers and cabinets for loudspeakers; illuminated signs, namely, illuminated exit signs; compact disc players; DVD players; phototelegraphy apparatus; slide and photograph projection apparatus; exposed camera films; cinematographic cameras; photocopiers; computer-based electronic translation apparatus, namely, electronic pocket translators; encoded magnetic cards for use as electronic tickets; integrated circuit cards, namely, encoded smart cards containing programming used for controlling and operating vehicles; encoded telephone cards, namely, pre-paid telephone calling cards, magnetically encoded; mechanisms for coin-operated apparatus; automatic banking machines, namely, automated teller machines; cash registers; calculators; data processing apparatus; computers; electronic agendas, namely, calendars and organizers; facsimile apparatus; computer monitors; computer peripheral devices; recorded and downloadable computer software for use in database management and for use in the autonomous navigation of vehicles; computer application software for operating vehicles, namely, software for use in database management and for use in the autonomous navigation of vehicles; all the above goods are not related to video games; pocket calculators; downloadable electronic publications in the nature of magazines in the field of automobiles; downloadable image files containing images of automobiles; crash test dummies; microscopes; electric sockets, plugs and contacts; electric igniting apparatus for igniting at a distance, namely, keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and key fob with electronic signal transponder; radioactivity measuring apparatus for industrial purposes; protective helmets; electric locks; electronic controllers and electronic control systems for controlling automobiles, engines and machines; none of the aforesaid goods in connection with rail vehicles |
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10. |
5888909 |
CAMPERID |
Class 35: Online retail store services in the field of outdoor consumer products, equipment, parts and accessories used with, or in association with, recreation vehicles, campers, cooking, towing, and other outdoor recreational activities; Online retail store services in the field of general merchandise and general consumer goods used for outdoor recreational activities |
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 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 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and 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.
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).
As Compared to Registration No. 5129458
In the present case, applicant’s mark is “ID” and registrant’s mark is “ID”. 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 registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
As Compared to Registration Nos. 5658672, 5129459, and 5129460
Applicant's mark is “ID” and the registrants' marks are “ID” and design. The word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
As such, the marks are confusingly similar.
As Compared to Registration Nos. 5917409, 5917407, 5917406, 5917405, and 5917404 (same owner)
Applicant's mark is “ID” and the registrant’s marks are “ID.9”, “ID.6”, “ID.5”, “ID.2”, and “ID.1”. Here, applicant has merely deleted matter from the registrant's marks to create its own mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s 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 these marks.
Therefore, the marks are confusingly similar.
As Compared to Registration No. 5888909
Applicant's mark is “ID” and the registrant’s mark is “CAMPERID”. Here, applicant has merely deleted matter from the registrant's mark to create its own mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. 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 mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, the marks are confusingly similar.
Comparison of Goods and Services
As Compared to Registration Nos. 5129458, 5129459, and 5129460 (same owner)
Applicant's goods are trailer brake controllers, and the registrant's goods include batteries and battery chargers. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from CURT Mfg, Tekonsha, and Reese-Hitches showing trailer brake controllers, batteries, and battery chargers provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
As Compared to Registration Nos. 5888909 and 5658672 (same owner)
Applicant's goods are trailer brake controllers, and the registrant's services include retail and online retail store services featuring automotive parts and accessories and online retail store services in the field of outdoor consumer products, equipment, parts and accessories used with, or in association with, recreation vehicles, campers, cooking, towing, and other outdoor recreational activities. Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from CURT Mfg, Tekonsha, and Reese-Hitches showing trailer brake controllers, retail and online retail store services featuring automotive parts and accessories, and online retail store services in the field of outdoor consumer products, equipment, parts and accessories used with, or in association with, recreation vehicles, campers, cooking, towing, and other outdoor recreational activities provided by a single source under the same mark. Therefore, consumers familiar with the registrant's services will also expect applicant's goods and services to be provided by the registrant.
As Compared to Registration Nos. 5917409, 5917407, 5917406, 5917405, and 5917404 (same owner)
Applicant's goods are trailer brake controllers, and the registrant's goods include electric batteries and replacement parts therefor and electronic controllers and electronic control systems for controlling automobiles, engines and machines. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from CURT Mfg, Tekonsha, and Reese-Hitches showing trailer brake controllers, electric batteries and replacement parts therefor, and electronic controllers and electronic control systems for controlling automobiles, engines and machines provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
Conclusion
The relatedness of the goods and services here, coupled with the similar and identical marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should additionally note the advisory below.
PRIOR-FILED APPLICATIONS—ADVISORY
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 marks in the referenced applications. 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.
RESPONSE GUIDELINES
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE
