To: | Astra Navigation, Inc. (tess@kppb.com) |
Subject: | U.S. Trademark Application Serial No. 90021607 - ASTRANAV M-GPS - A63-06835 |
Sent: | July 20, 2021 08:56:10 PM |
Sent As: | ecom123@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. 90021607
Mark: ASTRANAV M-GPS
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Correspondence Address: |
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Applicant: Astra Navigation, Inc.
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Reference/Docket No. A63-06835
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 20, 2021
INTRODUCTION
This Office action is supplemental to and supersedes the previous Office action issued on April 19, 2021 in connection with this application. The assigned Trademark Examining Attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, registration must be refused pursuant to Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
The Trademark Examining Attorney apologizes for any inconvenience caused by the delay in raising this issue.
Further, the requirement to amend the identification of services is SATISFIED. See TMEP §713.02.
SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:
Applicant must respond to the issue raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If Applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
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. 3490138. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant's mark is ASTRANAV M-GPS (standard characters) for “Downloadable computer application software for ground, air and sea navigation, ground, air and sea localization and mapping; and downloadable mobile applications for use in mobile devices for the purpose of generating maps, ground, air and sea localization and ground, air and sea navigation” in International Class 009 and “Providing online non-downloadable software for mapping, ground, air and sea localization, ground, air and sea navigation, processing location data, and accessing location tracking services via an interactive website; and providing an interactive website featuring technology enabling users to provide mapping, ground, air and sea localization, and ground, air and sea navigation services for use on mobile devices via mobile applications” in International Class 042.
Registrant's mark is MMGPS (standard characters) for “Positioning and surveying instruments, namely, global positioning systems consisting of receivers, transceivers, antennas, casings, rechargeable batteries, and platforms; computer software for computing an x, y and z coordinate on the earth and assigning an attribute or description to that coordinate for mapping purposes and for computing a users current location and navigating to a desired or previously fixed location, in the fields of surveying, construction, commercial mapping, civil engineering, precision agriculture, photogrammetry mapping, and hydrography measuring apparatus for use in preparing surveys of costal land formations and depth of harbors and seaways, apparatus and instruments for the surveying and locating terrestrial features and structures; laser surveying instruments, namely, lasers for use in measuring the range to, height, and weight of, and other dimensions relating to objects and terrain and creating two or three dimensional representations of the objects or terrain; rotating laser surveying instruments for surveying the position of land formations and terrestrial features and structures on a horizontal and vertical plane by illuminating lasers and swiveling lasers horizontally and vertically; laser and GPS systems, namely, receivers, electronic total stations, rotating lasers, pipe lasers for use in the field of agriculture, construction, machine control, surveying, mapping and positioning” in International Class 009.
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 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 and services and differences in the marks.”); TMEP §1207.01.
Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, the compared marks are confusingly similar in appearance. Applicant’s mark is “ASTRANAV M-GPS” and Registrant’s mark is “MMGPS”. The letter “M” combined with the term “GPS” creates the same overall commercial impression. See In re ANAA Holdings, LLC (Ser. No. 86619520, TTAB July 29, 2015)(affirmed) finding a likelihood of confusion between AIR ANAA and design and several marks with ANA for related services, the TTAB stating:
Although clearly not identical, we find that the marks are similar in appearance due to the inclusion of ANAA in Applicant's mark and ANA in the cited registration. These terms are highly similar in appearance, differing only by the addition of an extra "A" appended to Applicant's mark. Moreover, because a typed mark is not limited to any particular manner of display, e.g., Phillips Petroleum Co. v. C.J. Webb, Inc. 442 F.2d 1376, 58 C.C.P.A. 1255, 170 USPQ 35, 36 (CCPA 1971), we must consider the typeface, color, and other characteristics of ANA CARGO to be identical in stylization to the wording in Applicant's mark.
ANA and ANAA might both be perceived as acronyms, both as initialisms, or one an acronym and the other an initialism. If they are both acronyms, they could be pronounced similarly: A-N-A and A-N-A-A. If they are both initialisms, they would both likely be pronounced like the name "Anna." But even if one is considered an acronym and one an initialism, they still remain similar in appearance as previously discussed.
Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (affirming Board’s holding that source confusion is likely where COMMCASH and COMMUNICASH are used in connection with identical banking services); Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in appearance to BOSS AUDIO SYSTEMS (stylized)); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (finding NEWPORTS and NEWPORT to be essentially identical in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion). TMEP §1207.01(b)(ii).
The additional house mark “ASTRANAV” in Applicant’s mark fails to obviate this refusal. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007).
For the reasons set forth more fully above, the compared marks are confusingly similar.
Comparison of the Goods and Services
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In the present case, the parties’ goods and services both consist of mapping/location software, with Applicant’s Class 42 software merely a non-downloadable version thereof. Thus, the goods and services are similar in nature.
Additionally, the goods and 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)).
Moreover, to the extent the evidence may not address all of the items in Applicant’s identification, relatedness does not have to be established for every product and service. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified goods and services, which is enough to show a likelihood of confusion.
Therefore, Applicant’s and Registrant’s goods and services are considered related for likelihood of confusion purposes.
Conclusion
For the foregoing reasons, registration of the applied-for mark is refused pursuant to Section 2(d) of the Trademark Act.
HOW TO RESPOND
For this application to proceed, Applicant must explicitly address each refusal 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. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click to file a response to this nonfinal Office action.
ASSISTANCE
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.
/Samantha Sherman/
Examining Attorney
Law Office 123
571-270-0903
samantha.sherman@uspto.gov
RESPONSE GUIDANCE