United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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: November 23, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in
U.S. Registration Nos. 5934852; 6050045; 5876657; 4961901; 3399983; and 1815765. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
§§1207.01 et seq. See the attached registrations.
The applicant has applied to register HYUNDAI (in stylized form) for Digital
signage monitors; digital signage display panels; point of sale terminals; automated food and beverage order kiosk; interactive computer kiosk systems comprised primarily of computers and computer
touchscreens for use in purchasing foods; desktop computers; computer components and parts; computer docking station; computer keyboard covers; notebook and laptop computers; computer motherboards;
mounting racks for computer hardware; computer screen filters; screen protectors for digital or electronic tablets; computer servers; digital tablets; video cards; computer application software for
use in implementing the internet of things (IoT); microcontrollers for internet of things (IoT) enabled devices; battery chargers; headphones; computer keyboards; computer mouse; electronic styluses;
power adapters; audio speakers; data cables; uninterruptible power supply (UPS) apparatus; power cables; flash memory; SSD memory cards; data storage media; memory cards; magnetic storage and/or
recording media of data; hard drives for computers; external computer hard drives; computer network-attached storage hardware; computer monitors; computer featuring interactive video games; computer
peripheral devices; headphone for video games; headsets for video games; computer printers; photo printers; printers and their parts; image scanners; electronic scanners; photo scanners; business
card scanners; network routers; network servers; modems; network cards; network hubs; network communication switches.
The registered marks are:
- HYUNDAI ELECTRIC for Gas sensors for
measuring gas concentration; apparatus for measuring battery voltage, electric current and temperature; apparatus for measuring, namely, voltage measuring apparatus; electric current measuring
apparatus; revolution indicators for use in measuring voltage; gas alarms; safety valves for gas shut-off; security alarms; fire alarms; gas insulated switchgears; electric gas insulated switchgears;
electric relays; high-pressure electric vacuum contactors; high voltage circuit breakers; surge protectors; electric power control panels; electrical reactors; electric power distribution units;
switchboards; distribution transformers; transformers; inverters; switchgears; electric circuit interrupters; power supplies; power transformers for amplification; electric power controllers; voltage
regulators; electrical components in the nature of electric contactors; low and medium voltage circuit breakers; circuit breakers; inverters used in solar power generation; apparatus for measuring
electric energy consumption; apparatus and instruments for diagnosing electrical power installations, namely, apparatus and instruments for checking and testing the functioning of electrical power
supplies, electric power control panels, electric power distribution units and transformers; apparatus for measuring, monitoring and analyzing electricity consumption, namely, electricity meters; bus
ducts in the nature of electrical ducts; electric cables, wires, conductors and connection fittings therefor; converters; ship to shore communications apparatus, namely, radio transmitters and
receivers; remote controls for electric power controllers, transformers, circuit breakers, inverters and electric power distribution machines; communications equipment, namely, wireless communication
devices for voice, data or image transmission; computer software for supervisory control and data acquisition (SCADA) systems, namely, computer software for monitoring, gathering, and processing
real-time data in connection with the automated operations of electrical power installations and for controlling equipment installed in electrical power installations; computer network operating
software; computer software for controlling and monitoring vessels; computer software for controlling and monitoring a ship's general machinery, namely, pumps, compressors, tank levels, ventilation,
hydraulic units, cranes, door sensors, fire sensors; computer software for collecting, storing, sharing and transmitting data and information about shipping vessels and about goods being shipped in
vessels; computer software platforms for the control, monitoring and alarming of vessel and ship systems via a remote user interface; electronic control systems for machines; network servers; data
processing apparatus; digital data information processors; wireless controllers to monitor the functioning of other electronic devices, excluding gaming apparatus; apparatus for recording,
transmission or reproduction of information; computers; computer servers; downloadable electronic books in the field of electric power solution, energy solution and marine technology; batteries and
battery chargers (Reg. No. 5934852)
- HYUNDAI CONSTRUCTION EQUIPMENT for
Electronic keys in the nature of fobs being remote control apparatus; sensors for engines, namely, acceleration sensor; measures in the nature of tape measures, measuring wheels, pressure measuring
apparatus; tire pressure sensor; battery starters; electrical controlling devices; battery charge devices; plug connectors; batteries; remote control apparatus for industrial automation instruments;
factory automation software; educational software featuring instruction in the field of vehicles, construction equipment; computer programs being downloadable software for application software for
vehicle remote start, remote starting robotic vacuums; application software for smart phone in the nature of software for application software for vehicle remote start, remote starting robotic
vacuums; computer software to maintain and operate computer systems; data input/output module for industrial automatic instruments being computers; data collecting apparatus for industrial automatic
instruments being computers; computer monitor for industrial automatic instrument; electronic control systems for engines and machines (Reg. No. 6050045)
- HYUNDAI GREEN ENERGY for Solar batteries;
solar cell panels; Photovoltaic solar modules for converting electronic radiation to electrical energy; photovoltaic solar modules for production of electricity; solar power modules for production of
electricity; supports for solar power generation modules, namely, structural parts for photovoltaic solar modules for production of electricity; computer software for controlling solar power
generation system; simulators for solar cell module, namely, computer software for simulating energy production using a solar cell module; solar collectors; apparatus for measuring solar cell
efficiency and electric current, namely, electrical eddy current test equipment, electronic monitors and monitor modules for monitoring electric current and electrical signals, clamp meters for
measuring electricity; inverter used in solar power generation; apparatus for inspecting solar power generating facilities, namely, optical inspection apparatus for solar power generating facilities
and electro-optical instruments for use in inspection of solar power generating facilities; automatic solar tracking sensors; electric connector used in solar power generation; current converters
concerning solar energy; electrical controlling devices; inverters; high voltage reactors; electric reactors; electric transformers; electric power distribution machines; electric power converters;
current rectifiers; electricity transporting system apparatus, namely, electric wires and cables; energy storage apparatus comprised of batteries; solar energy storage device, namely, solar
batteries; computer software for controlling energy storage system; apparatus and instruments for accumulating and storing electricity, namely, electric accumulators and electric storage batteries;
battery packs; electric batteries; electric wires; electrical sockets; data processing apparatus; downloadable electronic publications in the nature of magazines and pamphlets in the field of solar
power generation; solar cell wafer (Reg. No. 5876657)
- HYUNDAI AUTRON (and design) for Cameras for
vehicles; adding machines; mechanisms for counter-operated apparatus, namely, coin or currency counting and sorting machines; mathematical instruments, namely, calculators for vehicles; time
recording apparatus; electric calculators for vehicles; totalizators, namely, adding machines; chronographs for use as specialized time recording apparatus; time recorders; electric relays;
electrical relays and transformers; high-frequency switching power supplies; power controllers; reactors, namely, electrical reactors, laboratory chemical reactors; electrical connection boxes;
switchboards for vehicles; indicating lamps for switchboards for vehicles; electrical distribution consoles; electrical distributing boards; electrical distribution boxes; electrical branch boxes,
namely, junction boxes; electrical cell switches for vehicles; solenoid valves being electromagnetic switches for vehicles; voltage regulators for vehicles; step-up transformers; round plug
connectors; electrical inductors; automatic time switches for vehicles; electrical reducers, namely, electric power convertors; electrical terminal blocks; electrical power distribution blocks;
electrical transformers; electric switches for vehicles; electric light dimmers being regulators for vehicles; electric regulating apparatus; electrical adapters; electrical inverters; electrical
control panels; electrical armatures; electric resistances; electric converters; electric connections; electric contacts; electric control panels; electric connectors; electric capacitors; electric
coils; holders for electric coils; fuses for telecommunication apparatus; electrical fuses; current converters; electric current switches for vehicles; electric current control devices; current
limiters; splices for electrical transmission lines; connections for electric lines; connectors for electric lines; electrical wire connectors; voltage surge protectors; voltage monitor modules;
voltage stabilizing power supply; voltage stabilizers; voltage regulators; power switches for vehicles; electromagnetic coils; blinkers being signaling lights, namely, flashing safety lights for
vehicles; current rectifiers; rectifier modules; electric apparatus for communication, namely, telecommunications and data networking hardware, namely, devices for transporting and aggregating voice,
data and video communications across multiple network infrastructures and communications protocols; commutators; phase modifier, namely, power controllers; power transformers for amplification;
circuit breakers; differential switches for vehicles; choking coils for use in controlling impedance in electrical apparatus; condensers being capacitors; rechargers for electric accumulators for
vehicles; battery charge devices for vehicles; fuses; fuse wire; plug connectors; wires for metal alloys, namely, fuse wire; anti-interference devices for insulating electrical transmission, namely,
insulators and filters for suppressing electrical interference; electrical circuit closers; rotary converters; electric power distribution machines and apparatus; electrical controllers; electrical
controlling devices; vehicle radios for vehicles; stereos, namely, stereo amplifiers for vehicles, stereo receivers for vehicles, stereo tuners for vehicles; audiovisual receivers for vehicles; audio
and video receivers for vehicles; receivers for satellites for vehicles; apparatus for voice recording and replaying for vehicles; apparatus for transmitting and reproducing sound or images for
vehicles; sound and video recording and playback machines for vehicles; radio receivers and monitors for the reproduction of sound and signals for vehicles; apparatus for the recording/transmission
or reproduction of sound and images for vehicles; recording and playing devices for sound and image carriers for vehicles; sound transmitting apparatus for vehicles; sound reproduction apparatus for
vehicles; acoustic couplers for vehicles; portable media players for vehicles; car broadcasting tuners for vehicles; car televisions for vehicles; electro-acoustic transducers for vehicles; electric
phonographs for vehicles; amplifiers for vehicles; loudspeakers with built-in amplifiers for vehicles; diaphragms used in acoustics, namely, electroacoustic transducers for vehicles; electricity
limiters for vehicles; car video recorders for vehicles; car cassette players for vehicles; cassette recorders for vehicles; cassette players for vehicles; tape and videotape players for vehicles;
television monitors for vehicles; television receivers being tv sets for vehicles; television decoders for vehicles; television apparatus for vehicles; power amplifiers for vehicles; loud speaking
apparatus and instruments, namely, loudspeaker systems comprised of speakers, amplifiers and speaker housings for vehicles; cabinets for loudspeakers for vehicles; public address systems for
vehicles; CD players for vehicles; DVD players for vehicles; radiotelephony sets for vehicles; terminals for radiotelephones for vehicles; video phones for vehicles; devices for hands-free use of
mobile phones for vehicles; intercoms for vehicles; interphones, namely, telephone intercoms for vehicles; telephone sets for vehicles; telephone connectors for vehicles; hands free kits for phones
for vehicles; telephone answering apparatus for vehicles; answering machines for vehicles; telephone apparatus for vehicles; portable telephones for vehicles; electronic frequency converters for high
velocity electro-motors; fixed multichannel communication apparatus, namely, multi-channel radio communication machines and apparatus for fixed stations for vehicles; fixed single channel
communication apparatus, namely, single-channel radio communication machines and apparatus for fixed stations for vehicles; single, channel radio communication machines and apparatus for fixed
stations for vehicles; apparatus for transmitting radio programmes and radio relay messages for vehicles; radar apparatus for vehicles; microphones for vehicles; modems for vehicles; devices for
wireless radio transmission for vehicles; masts for wireless aerials for vehicles; radiotelegraphy sets for vehicles; antennas for wireless communications apparatus for vehicles; carrier frequency
repeaters for vehicles; video multiplexers for vehicles; video transmission apparatus for vehicles; intercommunication apparatus, namely, interoperable communication system designed to provide radio,
streaming video, wireless internet, and VOIP phone for vehicles; manual switching apparatus for telecommunication for vehicles; telegraph apparatus for vehicles; navigation apparatus for vehicles in
the nature of on-board computers for vehicles; electro-dynamic apparatus for the remote control of signals; frequency converter for actuators; electric igniting apparatus, namely, electronic motor
vehicle ignition control units that electronically monitor engine performance and deliver re-calculated sensor values to regulate engine performance; remote control apparatus, namely, remote control
transmitter for radio, controlled devices, remote control starters and remote operation of vehicle functions; remote control telemetering machines and apparatus; global positioning systems being GPS
for vehicles; satellite aerials for vehicles; satellite navigational apparatus for vehicles; voice frequency transmission machines and apparatus for vehicles; apparatus for wireless transmission of
acoustic information for vehicles; satellite navigation equipment for vehicles; automatic answering machines for vehicles; automatic telegraph apparatus for vehicles; automatic telephone exchanges
for vehicles; navigation apparatus and instruments for vehicles; car aerials; telecommunication machines and implements, namely, telephone apparatus for vehicles; transmitters for telecommunication;
transmitting sets for telecommunication, namely, telecommunications transmitters; telegraphs apparatus; frequency converters; electrical transit switches for vehicles; radar receivers with
amplifiers; car antennas for vehicles; communications apparatus for vehicles, namely, apparatus for transmission of communication for vehicles; electro-dynamic apparatus for the remote control of
railway points, namely, a train control system used in the railway industry for detecting and controlling trains, ground faults, broken rails, power failures, track switches and lights for vehicles;
cable transmission machines and apparatus, namely, cable broadcast transmission machines and apparatus; television transmitters for vehicles; teleprompters for televisions for vehicles;
teletypewriters for vehicles; teleprinters for vehicles; electric resistors for telecommunication apparatus; electric capacitors for telecommunication apparatus; telecommunication exchanges;
telecommunications transmitters; apparatus for transmission of sound; converters; portable communications apparatus, namely, portable and handheld digital electronic devices for recording,
organizing, transmitting, manipulating, and reviewing text, data, image, and audio files for vehicles; computer programs being downloadable software for use in remote control of vehicles and devices,
for use in monitoring vehicle performance and maintenance, for use in transmitting vehicle performance and maintenance data to others, for use in accessing information about vehicle system control,
performance, maintenance and operation from networks, for use in updating electronic control unit operating systems, for use in providing technical support to software developers in vehicle field,
for use in receiving entertainment content, navigational and location information for vehicles, and radio signals, for use in testing vehicle control systems, for use in transmitting vehicle
telemetry and operation information, for use in monitoring and maintaining electronic interfaces to mechanical vehicle systems; computer programs for document management; operating system programs;
computer application software for mobile phones and smart phones, namely, software for electronic control of vehicles, software for obtaining information based on geographic location and proximity,
software for obtaining parking information, vehicle use and repair information; computer game programs for vehicles; computer software for operating vehicle electronic controls and control units;
data processing apparatus; microprocessors; vehicle drive training simulators; electronic circuit machines, namely, computer hardware and educational software for learning about circuit board layout,
function, and diagnostics for vehicles; computers for vehicles; communications computers for vehicles; geiger counters; phototubes, namely, photoelectric tubes; laser measuring systems; light
emitting electronic pointers; luminous pointers; video monitors; electric discharge tubes other than for lighting; cyclotrons; electronic tags for goods; thermionic valves; electronic cards for
processing images; magnetic encoders; electronic notice boards for vehicles; electrical monitoring apparatus, namely, electronic monitors and monitor modules for monitoring electric current and
electrical signals for vehicles; secure terminals for electronic transactions; electrical sockets for vehicles; safety contact plugs; anodes; cathodes; cathodic anti corrosion apparatus, namely,
cathodes for eliminating corrosion; magnets; magnetic cores; decorative magnets; covers for electric outlets; electric sockets for vehicles; electric plugs for vehicles; electromagnets; electric
collectors, namely, electric accumulators; plugs, namely, electrical plugs; plug adaptors; plugs, sockets for vehicles and other contacts, namely, electric connections; power strips with moveable
sockets for vehicles; electronic notice boards for vehicles; electron tubes; cards incorporating electronic devices, namely, electronic key cards, blank smart cards, encoded identity cards for
vehicles; electronic coding units for vehicles; electronic indicator panels for vehicles; transmitters of electronic signals for vehicles; electronic payment terminals for vehicles; electronic
indicator boards for vehicles; rectifier tubes; alarm central units; cards with integrated circuits for vehicles; couplers being data processing equipment for vehicles; monitors being computer
hardware for vehicles; electric control panels for checking electric cables; encoded magnetic cards for use as gift cards, debit cards, credit cards, key cards, identity cards; card readers for
credit cards; automatic solar tracking sensors; closed loop circuit boards; holograms, namely, electronic image files containing holograms, namely, downloadable image files and image files recorded
on electronic storage media; IC cards, namely, integrated circuit cards; LCD large-screen displays for vehicles; LCD panels for vehicles; diodes; semi-conductors; semi-conductor memories;
semiconductor elements, namely, semiconductor power elements; semi-conductor wafers; semiconductor power elements; light emitting diodes being LEDs; silicon wafers in the form of silicon slices;
electronic circuit boards; connectors for electronic circuits; integrated circuits; circuit boards provided with integrated circuits; integrated circuit modules; chips being integrated circuits;
thermistors; multi-outlet socket blocks for vehicles; anti-cathodes; transistors; circuit boards; erasing magnets (Reg. No. 4961901)
- HYUNDAI (stylized) for [ Audio mixers,
audio amplifiers, audio processing equipment, namely, limiters and compressors; audio speakers, speakers for computers, ] CDMA (Code Division Multiple Access) phones, GSM (Global System for Mobile
Communications) phones, DMB (Digital Multimedia Broadcasting) phones; [ CD players; VCD (Video Compact Disk) players; DVD players; Satellite receivers; ] CRT (Cathode-Ray Tube) TV's [, LCD (Liquid
Crystal Display) TV's, PDP (Plasma Display Panel) TV, Television apparatus for projection purposes; Batteries; [ Fax Machines; ] MP3 players; Global positioning system (GPS) consisting of computers,
computer software, transmitters, receivers, and network interface devices; Cameras, Digital Cameras; Car navigation computers, Navigation apparatus for vehicles in the nature of on-board computers,
TV receivers; TV prompter; Video game machines for use with television; TV Satellite broadcasting receivers; DMB (Digital Multimedia Broadcasting) receivers; Photo-telegraphy apparatus; Movie
projectors, Multimedia projectors, Video projectors, Liquid Crystal Display (LCD) projectors; Video game interactive hand held remote controls for playing electronic games; PMP (Portable Multimedia
Player); [ Digital door locks, ] Electric or electronic door openers and electronic door closing systems; Home automation system comprising computers, operating software, video cameras, lighting
control panels, lighting control software for home banking, home security and home lighting and cooling, video monitor to door camera, audio or video intercom, access control and alarm monitoring
systems, televisions and phones for kitchen ] (Reg. No. 3399983)
- HYUNDAI (and design) for computers (Reg. No.
1815765)
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.
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).
The applicant’s mark is similar to the registered marks because they all contain the wording HYUNDAI. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service
mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word
to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and
CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d
1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Although marks are compared in their entireties, one
feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903
F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether
marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050
(citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
COMPARISON OF THE GOODS
The compared goods and/or services 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).
Registration No. 5934852 HYUNDAI ELECTRIC
Applicant and registrant both provide the following goods: computers, network servers, and battery chargers. Applicant’s “power cables” and “data cables” are closely related to registrant’s “electric cables.”
Registration No. 6050045 HYUNDAI CONSTRUCTION EQUIPMENT
Applicant’s “battery chargers” are closely related to registrant’s “batteries, battery charge devices, and battery starters.” Applicant’s “computers” are closely related to “data collecting apparatus for industrial automatic instruments being computers.”
Registration No. 5876657 HYUNDAI GREEN ENERGY
Applicant’s “computers” are closely related to registrant’s “data processing apparatus” and “computer for vehicles.”
Applicant’s “battery chargers” are closely related to registrant’s “battery packs” and “electric batteries.”
Registration No. 4961901 HYUNDAI AUTRON
Applicant’s “computer monitors” are closely related to registrant’s “electronic monitors, television monitors, monitors for reproduction of sound and signals
for vehicles, video monitors, and monitors being computer hardware for vehicles.” Applicant’s “battery chargers” are closely related to registrant’s “battery charge devices for vehicles.” Applicant’s
“computers” are closely related to registrant’s “data processing apparatus,” microprocessors,” and “computer for vehicles.”
Registration No. 3399983 HYUNDAI
Applicant’s “battery chargers” are closely related to registrant’s “batteries,” “on-board computers,” and “car navigation computers.”
Registration No. 1815765 HYUNDAI
Applicant’s “computers” are identical to registrant’s “computers.”
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may
respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also
respond to the requirement(s) set forth below.
PRIOR PENDING APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 88/466818; 88/599435;
79/296062; 79/296072; 79/286356 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.
DESCRIPTION OF THE MARK
Although applicant submitted a drawing showing the mark in color with a
color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Therefore, applicant must provide this description. See TMEP §807.07(a)(ii).
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP
§807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so
specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate: “The mark consists
of the blue stylized wording “HYUNDAI”.
IDENTIFICATION OF GOODS
The identification of goods is unacceptable in part. Applicant must specify the common commercial name for the goods. Applicant may amend the identification to the following wording, if accurate:
Class 9:
Digital signage PO; Digital signage display panels; Point of sale terminals; Interactive computer kiosks
comprising computers, computer hardware, computer displays, computer peripherals, and computer operating software for use in automated purchasing of
food and beverages; Interactive computer kiosk systems comprised primarily of computers and computer touchscreens for use in purchasing
foods; Desktop computers; Computer components and parts, namely, computer keyboards and computer monitors; Computer docking station; Computer keyboard covers; Notebook and
laptop computers; Computer motherboards; Mounting racks for computer hardware; Computer screen filters; Screen protectors for digital or electronic tablets, namely, computer screen
filters; Computer servers; Digital tablets, namely, tablet computers; Video display cards; Downloadable computer application software
for mobile phones, namely, software for use in implementing the internet of things (IoT); Microcontrollers for internet of things (IoT) enabled devices; Battery chargers; Headphones; Computer
keyboards; Computer mouse; Electronic styluses for computers; Power adapters; Audio speakers; Data cables; Uninterruptible power supply (UPS) batteries for computers; Power
cables; Blank flash memory cards; Solid state drives; Memory cards; Data storage media, namely, blank flash
drives; Memory cards; Magnetic storage and/or recording media of data, namely, pre-recorded digital media devices featuring _______ (indicate subject matter); Blank hard drives for computers; External computer hard drives; Computer network-attached storage hardware; Computer monitors; Computer featuring interactive video games; Computer
peripheral devices; Headphone for video games; Headsets for video games; Computer printers for printing documents; Photo printers; Document printers
and structural parts therefor; Image scanners; Electronic scanners; Photo scanners; Business card scanners; Network routers; Network servers; Modems; Network cards; Computer network hubs; network communication switches.
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.
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).
RESPONDING TO THIS OFFICE ACTION
Please call or email the assigned trademark examining attorney with questions about this Office
action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or
requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Coleman, Cimmerian/
Trademark Examining Attorney
Law Office 102
571-272-9146
cimmerian.coleman@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.
