Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 16, 2021

 

 

This Office action is in response to applicant’s communication filed on 03/29/2021. Based on the assignment of the current application, the noted prior pending application no longer presents a potential bar to registration. The examining attorney has considered applicant’s arguments regarding the likelihood of confusion refusal but has found them unpersuasive. In addition, the identification of goods and services remains unacceptable. Therefore, for the reasons set forth below, the refusal under Trademark Act Section 2(d) as to U.S. Registration No(s). 5471267, as well as the requirement for an acceptable identification of goods and services, are now made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §§2.63(b), 2.64(a).

 

 

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL AS TO CLASS 12

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5471267.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

“‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

 

 

Regarding Registration No. 5471267

 

Applicant seeks registration of LUX for “Automobiles; transportation robots, namely, robotic transport vehicles; self-driving transport vehicles; unmanned conveying land vehicles; electric vehicles; passenger carrying vehicles; driverless cars; industrial vehicles; land transportation and mobility vehicles; mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles; transport vehicles, namely, autonomous vehicles for transport; autonomous cars; autonomous land vehicles; remote control vehicles; motors and engines for land vehicles; automatic steering apparatus for vehicles; land vehicle parts and accessories for safety; land vehicles; motor vehicles, namely, concept motor vehicles; vehicle camera mount; land vehicle parts and accessories for safety, namely, lighting apparatus, lighting system, and lighting configuration used to communicate and signal pedestrians; none of the foregoing for use in connection with golf carts or low-speed electric vehicles”

 

 

The cited registration is LUX for “Land vehicles, namely, low-speed electric vehicles; Motorized golf carts.”

 

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is LUX and registrant’s mark is LUX.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

 

 

The analysis now turns to the relatedness of the goods. In this case, both applicant and registrant have identified types of land vehicles, specifically electric vehicles. As illustrated by the attached dictionary definitions, an “automobile” is defined as a “self-propelled passenger vehicle that usually has four wheels and an internal-combustion engine, used for land transport” and a “vehicle” is defined as a “device or structure for transporting persons or things; a conveyance” or “a self-propelled conveyance that runs on tires.” Therefore, applicant’s goods such as automobiles, self-driving transport vehicles, passenger carrying vehicles, unmanned conveying land vehicles, land transportation and mobility vehicles, autonomous land vehicles and land vehicles, all encompass the registrant’s more specific identification of low-speed electric vehicles and motorized golf carts.

 

The attached Internet evidence, consisting of webpages from Perrone Robotics, Coast, Advanced EV and Moto Electric Vehicles, establishes that the same entity commonly manufactures and produces the relevant goods, markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and that the goods are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Please see the attached webpages from:

 

Perrone Robotics

http://www.perronerobotics.com/tony-lsv

Illustrating that applicant’s autonomous and electric vehicles and registrant’s low-speed vehicles are mutually encompassing.

 

Coast

http://www.coastautonomous.com/#overview

Illustrating that autonomous and electric vehicles and golf carts originate from a common source.

 

Advanced EV

http://www.advancedevusa.com/read-more-about--aev-bus

http://www.advancedevusa.com/read-more-about--aev-2

Illustrating that autonomous and electric vehicles and shuttles/people movers and golf carts originate from a common source.

 

Moto Electric Vehicles

http://www.motoelectricvehicles.com/electric-vehicle

http://www.motoelectricvehicles.com/golf-carts

http://www.motoelectricvehicles.com/low-speed-vehicles

Illustrating that autonomous and electric vehicles and shuttles/people movers and low-speed vehicles and golf carts originate from a common source.

 

 

Further, Applicant’s goods such as motors and engines for land vehicles, automatic steering apparatus for vehicles and land vehicle parts and accessories for safety are also related to the registrant’s goods because they may all be used in connection with the registrant’s land vehicles.

 

The compared goods 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); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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)); TMEP §1207.01(a)(i).

 

Therefore, with the identical literal element of the marks and the closely related goods, consumers are likely to reach the mistaken conclusion that the goods are related and originate with a common source. As such, registration must be refused under Trademark Act Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

 

IDENTIFICATION/CLASSIFICATION OF GOODS AND/OR SERVICES

 

Applicant has identified the following:

 

International Class 12: Automobiles; transportation robots, namely, robotic transport vehicles; self-driving transport vehicles; unmanned conveying land vehicles; electric vehicles; passenger carrying vehicles; driverless cars; industrial vehicles; land transportation and mobility vehicles; mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles; transport vehicles, namely, autonomous vehicles for transport; autonomous cars; autonomous land vehicles; remote control vehicles; motors and engines for land vehicles; automatic steering apparatus for vehicles; land vehicle parts and accessories for safety; land vehicles; motor vehicles, namely, concept motor vehicles; vehicle camera mount; land vehicle parts and accessories for safety, namely, lighting apparatus, lighting system, and lighting configuration used to communicate and signal pedestrians; none of the foregoing for use in connection with golf carts or low-speed electric vehicles

 

International Class 41: Educational services, namely, classes in the field of operating self-driving vehicles; educational services, namely, online seminars in the field of autonomous vehicles, including providing articles and media about autonomous vehicles online through a website which also features a blog; providing online non-downloadable articles via websites and blogs in the field of development, testing and deployment of autonomous vehicle services; providing publications in the nature of newsletters on autonomous vehicles; providing non-downloadable publications in the nature of newsletters on operating, development, testing, and deployment of autonomous vehicles; publication of printed publications on autonomous vehicles including publications on development, testing, and deployment of software for autonomous vehicles; education in the nature of providing instruction to passengers about autonomous vehicles while those passengers are taking rides in an autonomous vehicle; education in the nature of field trips in the field of development, testing, and deployment of autonomous vehicles by providing rides in an autonomous vehicle; training services in the field of autonomous vehicle technical and mechanical systems

 

International Class 42: Remote monitoring of a vehicle carrying a passenger, fleet maintenance and repair, passenger interaction, payment verification, vehicle software testing and validation, data collection of a driveable environment, and 3D map generation for vehicles, all for supporting an autonomous vehicle fleet company; providing use of online non-downloadable software for onboarding, operation, control, monitoring and processing data of autonomous vehicles; providing temporary use of online non-downloadable software for monitoring, actuating, controlling, or operating autonomous vehicles; providing temporary use of online non-downloadable software for the connection to computer networks of autonomous vehicles and for data analytics regarding the operation of autonomous vehicles; providing online non-downloadable software services for transportation services, namely, coordinating, booking, and dispatching autonomous vehicles; research and development into autonomous vehicles; providing a website featuring online non-downloadable software for scheduling and coordinating transportation services; software as a service (SAAS) services featuring software for managing, dispatching, navigating, controlling, notifying riders, and scheduling autonomous vehicle fleet

 

 

 

The above bolded wording in the identification of goods and services is indefinite and must be clarified because the exact nature of the goods and services is unclear and overly broad and encompasses goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, the wording in International Class 12 could encompass lighting products properly classified in International Class 11. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services and ensure that the goods and services are properly classified.  See TMEP §1402.01.  If there is no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses or the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s) for services.  See id.

 

Applicant may substitute the following wording, if accurate:

 

 

International Class 11:

 

Land vehicle parts and accessories for safety, namely, lighting apparatus and installations for vehicles used to communicate with and signal pedestrians

 

 

International Class 12:

 

Automobiles; transportation robots, namely, robotic transport vehicles; self-driving transport vehicles; unmanned conveying land vehicles; electric vehicles, namely, electric land vehicles; passenger carrying land vehicles; driverless cars; industrial land vehicles; land transportation and mobility vehicles; mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic transport vehicles; transport vehicles, namely, autonomous vehicles for transport; autonomous cars; autonomous land vehicles; remotely controlled land vehicles; motors and engines for land vehicles; automatic steering for land vehicles; land vehicles; motor vehicles, namely, concept motor vehicles; vehicle camera mount; none of the foregoing for use in connection with golf carts or low-speed electric vehicles

 

 

International Class 41:

 

Educational services, namely, classes in the field of operating self-driving vehicles; educational services, namely, online seminars in the field of autonomous vehicles and distribution of training material in connection therewith in the nature of online articles and media about autonomous vehicles and providing a website featuring a blog in the field of autonomous vehicles; providing online non-downloadable articles via websites and blogs in the field of development, testing and deployment of autonomous vehicle services; providing online non-downloadable publications in the nature of newsletters on autonomous vehicles; providing online non-downloadable publications in the nature of newsletters on operating, development, testing, and deployment of autonomous vehicles; publication of printed publications on autonomous vehicles including publications on development, testing, and deployment of software for autonomous vehicles; education in the nature of providing instruction to passengers about autonomous vehicles while those passengers are taking rides in an autonomous vehicle; education in the nature of field trips in the field of development, testing, and deployment of autonomous vehicles by providing rides in an autonomous vehicle; training services in the field of autonomous vehicle technical and mechanical systems

 

 

International Class 42:

 

Quality control of goods and services, namely, remote monitoring of a vehicle carrying a passenger, fleet maintenance and repair, passenger interaction, payment verification, vehicle software testing and validation, data collection of a driveable environment, and 3D map generation for vehicles, all for supporting an autonomous vehicle fleet company; providing use of online non-downloadable software for onboarding, operation, control, monitoring and processing data of autonomous vehicles; providing temporary use of online non-downloadable software for monitoring, actuating, controlling, or operating autonomous vehicles; providing temporary use of online non-downloadable software for the connection to computer networks of autonomous vehicles and for data analytics regarding the operation of autonomous vehicles; providing online non-downloadable software services for transportation services, namely, coordinating, booking, and dispatching autonomous vehicles; research and development into autonomous vehicles; providing a website featuring online non-downloadable software for scheduling and coordinating transportation services; software as a service (SAAS) services featuring software for managing, dispatching, navigating, controlling, notifying riders, and scheduling autonomous vehicle fleet

 

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

MULTI-CLASS APPLICATIONS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 4 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.

 

 

/Katherine Weigle/

Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

(571) 270-1506

katherine.weigle@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 16, 2021 for

U.S. Trademark Application Serial No. 90022224

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Katherine Weigle/

Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

(571) 270-1506

katherine.weigle@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 16, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”