| To: | DATA ACCESS (julien@brand-access.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88332053 - STUDEBAKER - N/A |
| Sent: | 4/16/2019 3:08:53 PM |
| Sent As: | ECOM114@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
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. 88332053
MARK: STUDEBAKER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: DATA ACCESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/16/2019
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.
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 Issue(s) Applicant Must Address:
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. 3509858. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
STANDARD OF REVIEW
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.
COMPARISON OF MARKS
Both marks at issue consist of the same term “STUDEBAKER.” Further, although applicant’s mark is stylized, the registered mark is a typed drawing which means it may be displayed in any font, style, or stylization. Therefore, the marks are legally identical.
COMPARISON OF GOODS – PARTIAL REFUSAL AS TO INTERNATIONAL CLASS 9 ONLY
This refusal applies only to the following goods:
The goods in the cited registration include Electronic products, namely, compact stereos, boom boxes, radios, and personal stereos.
In this case, the application use(s) broad wording to describe the goods, such as “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), emergency (life-saving) and teaching apparatus and instruments which presumably encompasses all goods and/or services of the type described, including in registrant’s more narrow identification. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. Although applicant’s mark has been refused registration applicant may present arguments and evidence in support of registration. However, applicant must also address the refusal(s) and requirement(s) below.
IDENTIFICATION REQUIRES AMENDMENT
Applicant’s identification falls into multiple classes and particular items require amendment as noted below. See generally, TMEP § 1402.01. A suggested amendment / format for amendment is provided in bold.
CLASS 6 (add this class if you wish to keep this wording): Metal electric tool boxes and cases
CLASS 7: Kitchen machines, namely, electric garbage disposals, universal machines and apparatus for slicing and cutting, namely, electric machines and
apparatus for slicing or cutting food products, fruit and vegetables, electric kitchen apparatus and machines for mincing, grinding, squeezing, cutting, grating, peeling or
mixing, namely, electric graters, mixers, beaters, kneaders, choppers, grinders and separators for foodstuffs, juicers, fruit or vegetable juicers, vegetable peelers, slicers,
vegetable cutters, electric knives; electric can-opening machines; machines and automatic machines for laundry washing; spin driers not heated; dishwashers,
ironing machines, electric coffee grinders, electric kitchen machines, namely, electric juice extractors, electric mixers, electric can openers,
machines for cleaning footwear, washing appliances for clothes, vacuum cleaners; floor and wall maintenance machines namely sanding machines, scrubbing
machines; vacuum cleaners for household use; accessories and components of vacuum cleaners for household use, namely, vacuum cleaner brushes, vacuum cleaner hoses, vacuum cleaner
bags; apparatus and installations for spraying, rinsing and cleaning, particularly instruments for cleaning at high-pressure, using steam and steam blasting or steam particles, spray extraction
apparatus, brushing machines, wet vacuum apparatus, brush vacuum cleaners, cleaning machines for hard surfaces and textile furnishings, road sweeping machines; washing and rinsing machines for clothes; structural parts of these goods, namely, brushes, pipes, hand guns, suction strainers, nozzles, pipes of metal; electric hammers, pneumatic drills,
rotary drills, impact drills, electric drill screwdrivers, angle drills, drilling machines; electric impact wrenches, pneumatic impact wrenches; electric ratchet wrenches,
pneumatic ratchet wrenches; electric hammers; electric sanders; polishing machines; electric saws, chainsaws; power operated sharpeners, electric grinding wheels, pneumatic
grinding wheels, grinders, disc sanders; planing machines; pneumatic shears, electric shears; clippers (machines) machines, namely, electric clippers; painting machines;
cleaning machines for {specify the function of the goods}; pneumatic knives, electric knives, knife sharpening machines; glue guns, being hand held tools or fixed mechanically or
electrically or pneumatically operated; electric machine tools or other accessories for lasers, namely, {specify the goods from international class 7 type
in “007” into the ID Manual search bar and choose from the list}; providing accessories in the nature of cutting guides for an optical unidirectional guide; blowers and
suction machines for dust and dust extraction tubes being parts of the aforesaid machines; gas-operated soldering irons, electric soldering irons; electric
tool boxes and cases; wire brushes for use in machines (machine parts); machine tools for {specify the function}; motors
and engines except for land vehicles; couplings and transmission belts for machines; transmissions for machines; couplings for machines; torque converters,
clutches, fly wheels, shock absorbers, steering wheels other than for land vehicles; speed bumps for machines and machine brakes, and their structural parts, and command and control
devices sold as a unit, in particular mechanical, hydraulic, pneumatic, electrical, electrostatic, electromagnetic controls; alternators; starter motors; dynamos; igniting devices for internal
combustion engines; spark plugs; heating plugs for diesel engines; friction linings and anti-friction linings other than for vehicles; shoes, shoe plates, blocks, washers, sectors, discs, belts,
furs, rollers, made of or coated with friction or anti-friction bodies other than for vehicles; carbon brushes, particularly for alternators, electric motors or dynamos; fans for motors and engines;
hydraulic actuators of clutch controls; electric motors other than for land vehicles; hydraulic or pneumatic control devices for apparatus for heating, refrigerating,
ventilating, ventilation, air conditioning, ventilation, air-conditioning for vehicles move to Class 11; turbines other than for land vehicles; hydraulic or pneumatic controls for hydraulic
clutches; hydraulic or pneumatic control units for engines; transmissions, clutches, clutch mechanisms, friction discs, clutch release bearings, other than for vehicles; hydraulic clutch controls
not for vehicles; electric clutch controls; electronic and hydraulic actuators for clutch controls; electric generators; alternators; aeronautical engines; compressed air
engines; filters for cleaning cooling air, for motors and engines; oil filters, gasoline filters; shock absorber pistons being parts of machines; anti-pollution devices for
motors and engines; vacuum cleaners; vacuum cleaner accessories for disseminating perfumes and disinfectants; gearboxes other than for land vehicles; fuel economizers for motors and engines;
cartridges for filtering machines; clack valves; control cables for machines, engines or motors; control mechanisms, namely, {type in “007” into the ID Manual search bar and choose
from the list} for machines, engines or motors; hydraulic controls for machines, motors and engines; pneumatic controls for machines, motors and engines; fuel conversion apparatus for internal
combustion engines; fan belts for motors and engines; belts for motors and engines; jacks being machines; cylinder heads for engines; cylinders for motors and engines; pistons for cylinders; starters
for motors and engines; water separators; heat exchangers being parts of machines; exhausts for motors and engines; injectors for motor and engines; joints being
parts of engines; washing apparatus, namely, clothes washing machines; washing installations for vehicles; lifting apparatus, namely, {type in “007” into the
ID Manual search bar and choose from the list} ; machinery gears; pistons being parts of machines, motors or engines; compressed air pumps for garage installations; pressure valves being parts of machines; propulsion mechanisms other than for land vehicles; radiators for motors and
engines; valves being parts of machines; heat exchangers being parts of machines; turbocompressors for machines; fans for motors and
engines; control modules for electric motors being parts of machines; radiators for motors and engines; mufflers, fans for motors and engines; motor reducers; air filtration equipment for eliminating pollutant gases by photocatalysis; belt speed drives
CLASS 8 (add this class if you wish to keep this wording): Ironing machines, namely, electric flat irons
CLASS 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), emergency
(life-saving) and teaching apparatus and instruments class heading please delete; apparatus and instruments for conducting, switching, transforming, accumulating,
regulating or controlling electricity; apparatus and instruments for recording, transmitting, reproducing sound or images; apparatus and media for recording, transmission and reproduction of analog
or digital data for sounds, images; radio and television sets, radio-alarm clocks; software and software packages for {specify the function of the software packages}; data
processing equipment; computers; fire extinguishers; computer peripheral devices, namely, screens, keyboards, computer mice, control consoles and levers, digital, optical and magnetic disk and
diskette drives, digitizers, printers, modems, loudspeakers, headsets; telephone, fax and telecommunication apparatus Telecommunications apparatus,
namely, telephone and fax machines; local networks, namely, data processing equipment, integrated set-top receivers; television sets; cabinets for loudspeakers, loudspeakers; sound recording
media; audio tape recorders; video recorders; high-fidelity sound systems comprising {specify the components of the goods}; amplifiers, player-recorders for music, images,
texts, videos and multimedia data; cameras, namely, photographic cameras, digital cameras, motion picture cameras, video cameras; telephones, mobile telephones, telephones over the Internet and
related accessories for the aforesaid goods, namely, headphones, microphones, audio speakers, batteries; battery chargers; fire and smoke detection apparatus, namely fire alarms
and smoke detectors; fire extinguishers; electric locks, digital weather station instruments; videophones being electric monitoring apparatus; intercoms;
video telephones; radars; protective plug for electric apparatus; remote control, radio control receivers; electric or electronic apparatus and instruments for processing, storage, transmission,
dissemination and reception of data relating to the automation and management of the home and home equipment; computer interfaces for home automation applications; mobile software and applications
for operating a connected electronic apparatus for use in the fields of connected health, sports and well-being and home automation; mobile software and applications for
monitoring and security in the home, control and monitoring of electronic, electric apparatus and electric household appliances, for household energy management, remote control and management of
apparatus for health and personal well-being; apparatus and sensors for monitoring, control and remote control of electric, electronic and household apparatus; electric sensors; connected sensors, namely, electric sensors for connected well-being and apparatus; connected bracelets and spectacles, namely, smart watches and glasses; thermometers not for medical use; connected thermometers not for medical purposes; connected scales; apparatus and instruments, particularly modular, for the supply
of low or medium voltage electricity, conducting, distribution, switching, transformation, accumulation, regulation or control of low or medium voltage electricity; electric
switches, relays, programmers and thermostats; load controllers, namely, weighing apparatus; light dimmers; plugs, sockets; electric conductors, particularly wires, cables, rails
and buses; transformers; inverters (electricity); electrical terminal blocks; electrical connection boxes; terminals, namely, electrical terminators (electricity); circuit breakers; breakers, circuit breakers, switches, isolating switches; sunglasses, spectacles, fashion spectacles,
protective goggles and masks for the eyes and for sporting activities; spectacle lenses, spectacle holders, spectacle frames, spectacle cases and holders; spectacle chains; contact lenses and their
containers, magnifying glasses; binoculars; optical apparatus and instruments, namely, {specify the goods from international Class 9 using the link to the ID Manual below, type in
“009” and choose from the list}; glass for protective masks; frames for protective masks; cases and holders for protective masks; protective supports for shoulders and elbows, for protection
against accidents; protective helmets; protection devices against accidents for personal use, namely, {specify the goods from international Class 9 using the link to the ID Manual
below, type in “009” and choose from the list}; control level regulating valves for tanks for regulating the flow of gases and liquids
CLASS 11: Installations, apparatus for heating, steam generating, cooking, refrigerating, drying, air conditioning, ventilation, water supply; apparatus, instruments and machines
for air and water purification; air conditioners; air purifiers; grills for barbecuing; baths, bathtubs, whirlpool baths and bath installations; beverage-cooling apparatus and ice dispensers;
charcoal grills; cooking ovens; dehumidifiers; household ovens; electric steam cookers for food; electric food warmers; electric grills; electric apparatus for heating food for infants; electric
radiators; electric toasters; freezers; gas grills; all-purpose electric apparatus for preparing food in the nature of a worktop for grilling, roasting, cooking, baking, browning
and for barbecue and food grills; cooker hoods; refrigerating machines; refrigerators; lighting apparatus and illuminating installations and structural parts thereof, in particular electric lamps and luminaries; lighting apparatus with light-emitting diodes (LED), including organic LED, LED lamps and LED
luminaires; hand dryers, apparatus for hair, namely, hair dryer; laundry driers, electric; headlights for vehicles; vehicle headlights; signaling lights for vehicles; radiators, finned tubes, apparatus for heating, refrigerating, aeration, ventilation, air conditioning, climate control, demisters for vehicles and their parts; light bulbs for
directional signals for vehicles; demisting heating apparatus for vehicles; anti-dazzle devices for vehicles in the nature of lamp fittings; heating apparatus for defrosting
windows of vehicles; air conditioners for vehicles; defrosters for vehicles; level regulating valves for tanks; signaling lights for vehicles; heating and ventilating
installations, incorporating a device for the distribution of fragrances and perfumes inside a vehicle passenger compartment; heat guns, hot air guns; hydraulic or pneumatic control
devices for apparatus for heating, refrigerating, ventilating, ventilation, air conditioning, ventilation, air-conditioning for vehicles
CLASS 20 (add this class if you wish to keep this wording): Non-metal electric tool boxes and cases
MULTI-CLASS ADVISORY BASED ON SECTION 44
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
PRIOR FILED APPLICATION ADVISORY
The filing dates of pending U.S. Application Serial Nos. 88067376 and 88067361 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
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.
Respond online to this letter. Use the TEAS “Response to Office Action” online form to file a response.
HIRING TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.
/Siddharth Jagannathan/
Siddharth Jagannathan
Trademark Examining Attorney
USPTO, Law Office 114
571-272-6563 (phone)
Siddharth.Jagannathan@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
