To: | Armored Works, LLC (docketing@superiorip.com) |
Subject: | U.S. Trademark Application Serial No. 88958686 - CTI - 10351.24 |
Sent: | September 20, 2020 05:29:22 PM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88958686
Mark: CTI
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Correspondence Address:
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Applicant: Armored Works, LLC
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Reference/Docket No. 10351.24
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: September 20, 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.
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. 4887948. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant seeks to register the mark CTI for “Measuring a vehicle's maximum axle/wheel articulation at the four corners of the vehicle; Expressing a vehicle's maximum axle/wheel articulation at the four corners of the vehicle as a numerical value.” The registered mark is C T I for services including “Calibration services, and related consultation services; electronic testing of electronic equipment for scientific or industrial purposes; rental of measuring, testing and calibration equipment.”
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.
Similarity Of The Marks
The registered mark is C T I with a design. Applicant’s mark is CTI. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). As result, the dominant portion of the registered mark is C T I. C T I is essentially the same mark as CTI. The only difference is the unspoken spaces between the terms. The marks are the same in sound, meaning and commercial impression.
Similarity Of Goods/Services And Channels Of Trade
The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Applicant’s services are “Measuring a vehicle's maximum axle/wheel articulation at the four corners of the vehicle; Expressing a vehicle's maximum axle/wheel articulation at the four corners of the vehicle as a numerical value.” The registered mark is for services including “Calibration services, and related consultation services; electronic testing of electronic equipment for scientific or industrial purposes; rental of measuring, testing and calibration equipment.”
The attached evidence from www.thesaurus.com and www.merriam-webster.com establishes the fact that “calibration” is a synonym for “measurement.” Thus, the services are the same, as calibrating a vehicle's maximum axle/wheel articulation at the four corners of the vehicle is within the scope of overall calibration services. As the services are the same, they must be presumed to appeal to the same consumers and flow through common channels of trade.
For the foregoing reasons, registration is refused under Trademark Act Section 2(d).
Applicant should note the following additional ground for refusal.
Refusal – Specimens Unacceptable – Failure To Function As An Indicator Of Source
Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
The applied-for mark, as shown on the specimen, does not function as a service mark because it is used to communicate a calculated score and not to indicate the source of the services:
“Mean CTI Scores for ’07 – ’17 JK Wrangler Unlimited” See Page 3 of the application.
“Enter Corner Travel Index (CTI). Developed to better represent the off-road experience, a vehicle with a high CTI score offers good axle articulation and provides above-average off-road performance on uneven terrain and obstacles – which maintains wheel contact and increases stability.” See Page 4.
“(Passenger Front + Driver Rear) X 2c 10=CTI” See Page 4.
“YOUR CTI MEASUREMENTS:… Type of CTI? CERTIFIED ESTIMATED” See Page 5.
“… the cited is currently under construction but will allow users to see the builds associated with the various CTI scores… Corner Travel Index or CTI measures a vehicle’s maximum axle/wheel articulation… The CTI is used in the off-roading industry to quantify the axle/wheel articulation in order to compare the performance potential of a wide variety of vehicles… CTI totals the articulated wheel travel of each individual tire… and multiples that total by 10. A vehicle with a higher CTI will maintain more constant wheel contact with the ground while traveling over extreme terrain and obstacles… Measuring and Calculating CTI… CTI can be measured two ways, the two wheel method (Estimated) and the four wheel method (Certified)… Certified if required and preferred for a truly accurate measurement of the CTI.” See Page 6.
Pages 7 and 8 feature similar discussions of CTI, however, the print on most of these pages is too small to discern.
Identification
The identification of services is indefinite and must be clarified because the precise nature of the services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The bold italicized wording below indicates the nature of the detail required. The underlined italicized wording in brackets indicates the need for information that applicant must provide. Applicant may adopt the following identification, if accurate:
In an identification, an applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
For assistance in crafting acceptable identification wording, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04. For guidance regarding wording that is not listed in the manual, applicant should consider wording from registrations and approved applications that have been accepted/approved within the last year.
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
If applicant has questions regarding this Office action, please telephone the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06. Any arguments regarding the content of this Office action should be made in writing, as those discussions should be of record.
How to respond. Click to file a response to this nonfinal Office action.
/Tracy Whittaker-Brown, Esq./
Examining Attorney, Law Office 111
U.S. Patent & Trademark Office
Tracy.Whittaker-Brown@uspto.gov
571-272-9397
RESPONSE GUIDANCE