To: | Thomas C. Stewart (monika.jaensson@dinsmore.com) |
Subject: | U.S. Trademark Application Serial No. 88858811 - SPECTRASWITCH - N/A |
Sent: | July 01, 2020 01:00:00 PM |
Sent As: | ecom108@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. 88858811
Mark: SPECTRASWITCH
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Correspondence Address: 707 VIRGINIA STREET, EAST - STE 1300
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Applicant: Thomas C. Stewart
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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: July 01, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the likelihood to cause confusion and identification issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Mark is Likely to Cause Confusion
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 5790798 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
Analysis of Applicant’s Mark and Registered Mark
First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term “SPECTRASWITCH.” Accordingly, the applicant’s mark, “SPECTRASWITCH,” is similar in sound, appearance, connotation and commercial impression to Registration No. 5790798’s mark “SPECTRASWITCH.” Similarity in any one of these elements alone is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
Analysis of Goods
Second, a comparison of the applicant’s goods, “a passive fiber optomechanical switch system to reflectively control remote electrical device,” to the registrant’s goods shows the relationship between them. Registration No. 5790798’s mark is for radiation sensing, measuring apparatus and instruments; flow measuring apparatus; fluid flow meters and medical apparatus and instruments, namely, imaging apparatus including X-ray apparatus and instruments; medical radiation apparatus.
The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration. If the application or cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application and registration encompass all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co., v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); In re Elbaum, 211 USPQ 639 (TTAB 1981). The applicant’s broad identification is seen to include switch systems for remote electrical devices such as measuring apparatus and instruments and medical radiation apparatus.
The examining attorney must consider any goods in the registrant's normal fields of expansion to determine whether the registrant's goods are related to the applicant's identified goods under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). Accordingly, the mark is likely to cause consumer confusion as to source.
Other Considerations
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, the following issue must also be addressed.
The Identification of Goods is Indefinite
Applicant may adopt the following identification, if accurate (suggested wording appears italicized print):
Passive fiber optomechanical digital switching systems comprised of interconnected electromechanical and solid-state power management enclosures with standard and custom keypads for user remote control of electrical devices, namely, the foregoing for use on marine helms and land-based vehicle dashboards in Class 9. TMEP Section 1402.01.
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
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.
How to respond. Click to file a response to this nonfinal Office action.
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.
/Jason F. Turner/
Jason F. Turner
Examining Attorney
Law Office 108
(571) 272-9353
jason.turner@uspto.gov
RESPONSE GUIDANCE