To: | Ford Motor Company (tmdocket@ford.com) |
Subject: | U.S. Trademark Application Serial No. 90014301 - MC - 84285119 |
Sent: | September 01, 2020 05:08:55 PM |
Sent As: | ecom106@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. 90014301
Mark: MC
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Correspondence Address: SUITE 800, FAIRLANE PLAZA SOUTH
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Applicant: Ford Motor Company
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Reference/Docket No. 84285119
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 01, 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.
The following refusal is limited to Class 35.
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.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s mark is the stylized wording MC. The registrant’s mark is MC in standard characters.
Applicant’s mark is similar to registrant’s mark because the marks consist of the same two letters, MC. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Additionally, as registrant’s mark is in standard characters, it could appear in exactly the same stylization as the applicant’s mark.
In this case, the application use(s) broad wording to describe the services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow services. 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). Specifically, applicant’s retail store services are not limited to any field or subject matter, and thus, could include registrant’s retail store services featuring granite, marble, quartz, quartzite, sinks and faucets. Thus, applicant’s and registrant’s services 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)).
For the reasons set forth above, registration is refused based on the Trademark Act Section 2(d) for Class 35.
Identification
Class 35 –
Promoting the goods and services of others; promoting the goods and services of others by providing hypertext links to the web sites of others; marketing services, namely, promoting or advertising the goods and services of others; real estate marketing services in the field of residential homes and office buildings provided via the internet; providing consumer product information via the internet; providing business information, namely, commercial corporate and statistical information provided on-line; retail store services featuring a wide variety of consumer goods of others; arranging and conducting of exhibitions for business purposes; promotional services, namely, promoting the goods of others by providing online gift cards, gift certificates, coupons, restaurant menus; incubation services, namely, providing work space containing business equipment to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others
Class 36 – Acceptable.
Class 37 – Acceptable.
Class 41 –
Conducting cultural or educational exhibitions and interactive exhibits and displays in the fields of history, architecture and neighborhood growth and development; providing career coaching services
Class 42 – Providing technological and scientific information about environmentally-conscious and green innovations; Analysis of industrial fluids
Class 43 – Acceptable.
Class 45 – Acceptable.
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.
/Tejbir Singh/
Trademark Attorney
Law Office 106
571-272-5878
571-273-9106 (fax)
Tejbir.Singh@uspto.gov
RESPONSE GUIDANCE