To: | Yadea Technology Group Co., Ltd. (chiipdocket@michaelbest.com) |
Subject: | U.S. Trademark Application Serial No. 90181546 - YADEA - 216935-9001 |
Sent: | January 12, 2021 01:12:13 PM |
Sent As: | ecom107@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
U.S. Application Serial No. 90181546
Mark: YADEA
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Correspondence Address: 444 W. LAKE STREET, SUITE 3200
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Applicant: Yadea Technology Group Co., Ltd.
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Reference/Docket No. 216935-9001
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: January 12, 2021
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) Partial Refusal– Likelihood of Confusion
THIS REFUSAL APPLIES ONLY TO THE SPECIFIED GOODS
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).
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).
In the present case, the applicant’s mark, YADEA (& Design), is similar to the registrant’s mark, YADEA, and will lead to consumer confusion. Specifically, the marks are similar in sound, meaning, and appearance. While the applicant’s mark includes an additional design element, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Comparison of the Goods and/or Services
Here, the applicant’s goods, namely “electric navigational instruments; electronic navigational and positioning apparatus and instruments; rearview cameras for vehicles; voltage regulators for vehicles; components for electrical mains in the nature of electric wires, connectors, circuit breakers, cables; electrical adapters; protective helmets; parts for anti-theft automotive alarms, namely, electronic sensors, remote control transmitters and receivers for remotely operating land vehicles; locks, electric; batteries, electric, for vehicles; and electric bicycles; tricycles not being toys; mopeds; motors, electric, for land vehicles; self-propelled electric vehicles; land vehicles, namely, low-speed electric vehicles; remotely controlled land vehicle; bicycles; self-balancing scooters; motorcycles; anti-theft alarms for vehicles” are identical or closely related to the registrant’s goods, namely “aeroplanes; bicycles; boats; electric cars; land vehicles; mopeds; motorcycles; railway cars; self-propelled electric vehicle” because both are likely to travel through the same channels of trade to the same classes of purchasers. For example, both would likely be sold at retail stores specializing in vehicles and bicycles.
With respect to the applicant’s Class 9 goods, applicant should note that vehicles and their various accessories, parts, and attachments may be closely related goods such that the average person encountering the same or similar marks for such products is likely to be confused as to their source. See, e.g., In re Gen. Motors Corp., 196 USPQ 574, 576 (TTAB 1977). It is well established in the marketplace that manufacturers of vehicles often produce accessories and attachments for such vehicles and market them under the same mark. E.g., In re Gen. Motors Corp., 23 USPQ2d 1465, 1469 (TTAB 1992); In re Sien Equip. Co., 190 USPQ 84, 85 (TTAB 1976).
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant should note the following additional potential ground for refusal.
Prior Pending Application
Information regarding pending Application Serial No. 88926734 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
General Inquiry on Significance
Applicant must explain whether “YADEA” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. Applicant must also explain whether this wording identifies a geographic place, or has a meaning in a foreign language. See 37 C.F.R. §2.61(b); TMEP §814.
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
Identification of Goods and/or Services Amendment Requirement
Here, the wording “…software for…using in” and “retail services” in the identification of goods and/or services must be clarified because it is too broad and could include goods and/or services in other international classes. See TMEP §§1402.01, 1402.03.
For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below. The applicant may adopt following wording, if accurate, because it is sufficiently definite and properly classified (all other goods and services are acceptable as proposed):
“Downloadable computer application software for mobile phones, namely, software for using in database management, and for using
in electronic storage of data; electric navigational instruments; electronic navigational and positioning apparatus and instruments; rearview cameras for vehicles; voltage regulators for
vehicles; components for electrical mains in the nature of electric wires, connectors, circuit breakers, cables; electrical adapters; protective helmets; parts for anti-theft automotive alarms,
namely, electronic sensors, remote control transmitters and receivers for remotely operating land vehicles; locks, electric; batteries, electric, for vehicles,” in International Class 9;
“Online advertising on a computer network; providing business information via a web site; commercial information agency services; import-export agency services; sales promotion for others; marketing services; provision of an online marketplace for buyers and sellers of goods and services; personnel management consultancy; administrative processing of purchase orders; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies,” in International Class 35.
See TMEP §1402.01.
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.
Assistance
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
Jimmy Stein
/Jimmy Stein/
Trademark Examining Attorney
Law Office 107
(571) 272-3056
james.stein@uspto.gov
RESPONSE GUIDANCE