To: | ACPS Automotive GmbH (rockmail@reinhartlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88789698 - FIXMATIC - 512178 |
Sent: | April 28, 2020 04:10:17 PM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88789698
Mark: FIXMATIC
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Correspondence Address: REINHART BOERNER VAN DEUREN P.C.
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Applicant: ACPS Automotive GmbH
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Reference/Docket No. 512178
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: April 28, 2020
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 APPLICANT MUST ADDRESS:
REFUSAL - 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. 5163551 (FIXMATIC for “vehicle trailer devices, namely, tow bars for trailers, tow bars for vehicles, rear carriers for vehicles, bicycle carriers for vehicles; security features, namely, trailer hitches for protection against trailer detachment; trailer couplings; trailer hitches for vehicle; trailer couplings including trailer coupling parts for vehicles; bicycle racks for vehicles”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
A. General Principles in Determining Likelihood of Confusion:
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.
B. Similarity of the 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 the present matter, the applicant has applied to register the mark FIXMATIC in standard characters. The registrant has registered the mark FIXMATIC and design. The marks are very similar based on applicant’s FIXMATIC vs. registrant’s FIXMATIC. This is because these components are identical and dominant in both marks.
C. Relatedness of the Goods:
The applicant’s goods (“carrier units, in particular bicycle racks, that can be fixed to motor vehicles, in particular to motor vehicle trailer hitches; carrier units, in particular load and/or bicycle racks, with stabilising elements for supporting the aforesaid on the respective trailer hitch; coupling units for carrier units, in particular load and/or bicycle racks, that can be connected to motor vehicle trailer hitches; coupling units for carrier units, in particular load and/or bicycle racks, that can be connected to motor vehicle trailer hitches, comprising stabilising elements for additional support for the aforesaid on the respective trailer hitch; trailer hitches for motor vehicles; trailer hitches comprising additional stabilising elements for carrier units that can be fixed to the trailer hitches, in particular for load and/or bicycle racks; trailer hitches comprising a ball neck and a coupling ball and at least one stabilising element arranged on the ball neck in addition to the coupling ball for stabilising a carrier unit, in particular for stabilising a load and/or bicycle rack”) are related to the registrant’s goods (“vehicle trailer devices, namely, tow bars for trailers, tow bars for vehicles, rear carriers for vehicles, bicycle carriers for vehicles; security features, namely, trailer hitches for protection against trailer detachment; trailer couplings; trailer hitches for vehicle; trailer couplings including trailer coupling parts for vehicles; bicycle racks for vehicles”) because both include the same goods.
D. Conclusion:
E. Response Guidelines:
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the foregoing refusal(s) to register, then applicant must also respond to the following requirement(s).
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Please note that the remaining goods and/or services recited in the identification are acceptable without further amendment.
Applicant may adopt the following identification, if accurate. Please note that the wording subject to this requirement and the suggested changes made by the trademark examining attorney appear in bold.
Carrier units, in particular bicycle racks, that can be fixed to motor vehicles, in particular to motor vehicle trailer hitches; Carrier units, in particular load and bicycle racks, with stabilising elements for supporting the aforesaid on the respective trailer hitch; Coupling units for carrier units, in particular load and bicycle racks, that can be connected to motor vehicle trailer hitches; Coupling units for carrier units, in particular load and bicycle racks, that can be connected to motor vehicle trailer hitches, comprising stabilising elements for additional support for the aforesaid on the respective trailer hitch; Trailer hitches for motor vehicles; Trailer hitches comprising additional stabilising elements for carrier units that can be fixed to the trailer hitches, in particular for load and bicycle racks; Trailer hitches comprising a ball neck and a coupling ball and at least one stabilising element arranged on the ball neck in addition to the coupling ball for stabilising a carrier unit, in particular for stabilising a load and bicycle rack (Class 012)
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.
Notice. Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
If applicant chooses to respond to the foregoing refusal(s)/requirements, then applicant should note the following advisory(ies).
ADVISORY - §1(b) AND §44(d) WITH INTENT TO PERFECT §44(e). The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
ASSISTANCE. Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
/Deirdre G. Robertson/
Deirdre G. Robertson
Trademark Examining Attorney
Law Office 111
571-272-8806
deirdre.robertson@uspto.gov
RESPONSE GUIDANCE