To: | Pylon Manufacturing Corp. (trademark@honigman.com) |
Subject: | U.S. Trademark Application Serial No. 88750916 - X-FLEX - X-FLEX |
Sent: | March 28, 2020 06:36:38 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88750916
Mark: X-FLEX
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Correspondence Address: 39400 WOODWARD AVENUE, SUITE 101
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Applicant: Pylon Manufacturing Corp.
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Reference/Docket No. X-FLEX
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: March 28, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – 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. 2688807 (X-FLEX). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant seeks to register the mark “X-FLEX” for “Windshield wiper blade technology system sold as an integral component of windshield wiper blades for vehicles; windshield wiper blade system to control movement, contact and connection for the wiper blade sold as an integral component of windshield wiper blades for vehicles” in Class 12.
The registered mark “X-FLEX” identifies “vehicle fender mounting kits composed primarily of isolators, mounting hardware and mounting brackets” in Class 12.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s mark is X-FLEX and registrant’s mark is X-FLEX. 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.
Relatedness of the 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); 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).
For these reasons, consumers are likely to encounter the parties’ goods in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods provided under the marks. Accordingly, registration is refused under Trademark Act Section 2(d).
Applicant must clarify some of the wording in the identification of goods because it is indefinite or overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. Specifically, the wording “Windshield wiper blade technology system sold as an integral component of windshield wiper blades for vehicles” and “windshield wiper blade system to control movement, contact and connection for the wiper blade sold as an integral component of windshield wiper blades for vehicles” is indefinite because the component parts of the systems are not specified.
Applicant may substitute the following wording, if accurate:
Class 12: Windshield wiper blade technology system comprised of {indicate component parts} sold as an integral component of windshield wiper blades for vehicles; windshield wiper blade system comprised of {indicate component parts} to control movement, contact and connection for the wiper blade sold as an integral component of windshield wiper blades for vehicles
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.
Response Guidelines
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@uspto.gov
RESPONSE GUIDANCE